What issues can arise from improperly presented prophetic examples?

Improperly presented prophetic examples in patent applications can lead to serious issues, including questions about the adequacy and accuracy of the disclosure, and potential inequitable conduct charges. The MPEP 2164.02 warns:

“When prophetic examples are described in a manner that is ambiguous or that implies that the results are actual, the adequacy and accuracy of the disclosure may come into question.”

Potential issues arising from improperly presented prophetic examples include:

• Enablement rejections under 35 U.S.C. 112(a)
• Written description rejections under 35 U.S.C. 112(a)
• Inequitable conduct allegations in litigation

The MPEP cites two relevant court cases:

1. Hoffmann-La Roche, Inc. v. Promega Corp.: Identifying a prophetic example in the past tense raised an inequitable conduct issue.
2. Apotex Inc. v. UCB, Inc.: The inventor admitted to never performing the experiments described in past tense, leading to inequitable conduct findings.

To avoid these issues, applicants should clearly distinguish prophetic examples from actual results and use appropriate tense when describing them.

To learn more:

• prophetic examples
• enablement
• written description
• inequitable conduct
• MPEP 2164.02