USPTO warns patent applicants over predicted results
The US Patent and Trademark Office (USPTO) has warned applicants to clearly distinguish between real and predicted results when drafting patents.
Predicted or “prophetic” results should be described using the present or future tense to avoid confusion, said USPTO Commissioner for Patents, Andrew Hershfield, in a US Federal Register notice today, July 1.
Applicants can use examples to demonstrate how a person of ordinary skill in the art could practise the claimed invention. They are allowed to use predicted results for this purpose, but must make it clear that these are not real results.
Failure to do so could endanger the success of a patent application, Hershfield warned, writing: “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.”
“Care should be taken to see that inaccurate or misleading statements, inaccurate evidence, or inaccurate experiments are not introduced into the record,” he added.
Describing predicted or hypothetical results using the past tense, in a way that implies the experiments were actually performed, could be considered fraud, the Federal Register notice said.
“No results should be represented as actual results unless they have actually been achieved. Distinguishing prophetic examples from working examples in a clear manner will avoid raising issues relating to the applicant’s duty of disclosure,” it said.
The notice details “best practice” for applicants to follow to ensure prophetic results are clearly distinguished from actual results.
“It is a best practice to label examples as prophetic or otherwise separate them from working examples to avoid ambiguities. Such presentation will help a reader easily distinguish prophetic examples from working examples with actual experimental results and will enhance the public’s ability to rely on the patent disclosure.”
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