On July 1, the U.S. Patent & Trademark Office (USPTO) issued guidance reminding applicants to distinguish between prophetic examples and working examples.1 Prophetic examples describe reasonably anticipated results on experiments that have not yet been performed. Working examples describe experiments that have actually been performed.
Disclosure of results, whether the results are prophetic or actual, is not normally questioned by the USPTO. However, if the description of the prophetic examples reasonably raises questions as to whether they relate to experiments that were actually performed, the accuracy of the disclosure can be questioned. Moreover, misleading characterizations of prophetic examples as actual results may result in the examiner rejecting claims based on insufficient disclosure under the enablement or written description requirements.
Making clear distinctions between prophetic and working examples will help ensure that applicants meet the duty of disclosure required by the USPTO. Consider reaching out to counsel familiar with the USPTO to determine how this guidance impacts your patent applications.
Footnote
1. https://public-inspection.federalregister.gov/2021-14034.pdf
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