Lack of proof no bar to patent applications

Fake news extends to patent applications, it seems, although that in itself is not technically news.

It’s legal and accepted practice to include “predicted experimental methods and results” in patent application documents. In other words, things that haven’t actually been done yet.

All that is required, note US lawyers Janet Freilich and Lisa Larrimore Ouellette in an article in the journal Science, is make sure these “prophetic examples” are not referred to in the past tense.

And that disturbs them. 

“Even if allowing untested inventions to be patented is desirable, we think prophetic examples deserve closer scrutiny, and clearer labelling, because of the likelihood that they are unnecessarily confusing – particularly to scientists, many of whom read patents but are unlikely to appreciate that not all the claims are based on actual data,” they write. 

In a survey of 100 randomly selected patents that were cited in scientific literature and featured only prophetic examples, Freilich and Larrimore Ouellette found 99 were not cited in a way that they considered made it clear they contained no actual data. 

They also interviewed patent prosecutors who do and don’t use prophetic examples. 

Those who do “consistently explained that such examples make clear how an inventor expects an idea to work in scenarios for which there is not time or money to test before the desired patent filing deadline”.

The ramifications can be far-reaching.

“Because of concerns about awarding patents to unproven inventions, prophetic examples are viewed with greater scepticism in Europe, Canada, Japan, and China,” they write. 

“However, because patents with the same contents are often filed in multiple regions, prophetic examples originating in US applications will often be present in applications filed in other jurisdictions. 

“Further, because patent offices and examiners in those countries commonly read and cite patents from other jurisdictions, countries sceptical of prophetic examples still feel their effects.”

Two useful immediate steps, the authors suggest, would be to require new patent applications to be labelled to make a clearer distinction between prophetic and non-prophetic examples, and to encourage patent drafters to “avoid potentially confusing details or language”.