The U.S. Patent and Trademark Office (Patent Office) issued a notice titled “Properly Presenting Prophetic and Working Examples in a Patent Application,” reminding patent applicants of their obligation to ensure that patent applications are written in a manner that clearly distinguishes prophetic examples with predicted experimental results from working examples having actual experimental results.1 According to the Patent Office, the distinction must be clear in order to fulfill the written description and enablement requirements and comply with the applicant’s duty of disclosure.
Prophetic examples describe experiments that have not in fact been performed; they provide estimates that describe simulated or predicted results. In contradistinction, working examples are work performed or experiments conducted that have generated actual results. The Manual of Patent Examining Procedure (MPEP) states that prophetic examples should not be presented in a patent application using the past tense.2 Prophetic examples may be described in the future or present tense. Drafting a patent application in this manner enables readers to distinguish between actual working examples and prophetic examples.
What’s Ahead?
The Patent Office does not frequently provide a practice reminder, unless prior patent applications have caused issues or problems during the examination process. This notice advises applicants that the Patent Office will be reviewing specifications very carefully with respect to the wording of working versus prophetic examples. Thus, to ensure a smooth examination process with respect to this issue, applicants should be careful when presenting examples in their specifications. This notice intimates that the Patent Office might issue written description and/or enablement rejections, and does not address what types of remedial action might be possible during prosecution to overcome such rejections. In addition, by referencing an applicant’s duty of disclosure obligation, the Patent Office has added another factor applicants and their representatives should consider when drafting their patent applications.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 Properly Presenting Prophetic and Working Examples in a Patent Application, 86 Fed. Reg. 35074 (July 1, 2021).
2 MPEP 608.01(p), subsection II.