"Where there is no vision, the people perish: but he that keepeth the law, happy is he."
-- Proverbs 29:18, King James Bible (KJV)

Thursday, June 20, 2019

The Bizarre World of Hypothetical viz. Fictional "Prophetic Examples" in Patents

The Stanford Legal Aggregate has just published an article by Professor Lisa Larrimore Ouellette titled Science Fiction: Fictitious Experiments in Patents.

According to present law in force, as unbelievable as it sounds, patents can be based on fictitious "prophetic examples" and can rely on completely hypothetical results, which do not even have to be identified as such in patent documents.

Fordham Law News in Fictitious Data, Real Patents by Nate Svogun writes:

"While government law enforcement agencies and regulatory bodies don't take kindly to false or misleading information, the U.S. Patent and Trademark Office allows pie-in-the-sky claims when it comes to the potential uses of a particular patent....

The Patent and Trademark Office (PTO) and the courts explicitly permit made-up experiments and fictional data in patents.
"

Indeed, contemporary patent laws and court decisions have created a windfall world for patent holders, as patent grants have gone far beyond the protections imagined for inventors and their discoveries by the American Founders.

The US Constitution provides:

"Article I Section 8. Clause 8 – Patent and Copyright Clause of the Constitution. [The Congress shall have power] “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

Well, let us ask, what in our modern era is now a patentable "discovery"?

As written at Legal Aggregate:

"(This article was first published in Science on June 14, 2019.) Although it may surprise scientists, one can receive a patent in many jurisdictions without implementing an invention in practice and demonstrating that it works as expected. Instead, inventors applying for patents are allowed to include predicted experimental methods and results, known as prophetic examples, […]"

The American Association for the Advancement of Science (AAAS) Eureka Alert! News Release of June 13, 2019 titled Clarifying the fictional science of prophetic patents: Labels needed? writes:

"In a Policy Forum, Janet Freilich and Lisa Larrimore Ouellette highlight the common practice of including "prophetic" examples in patents - particularly in the fields of chemistry and biology, where patents routinely describe the outcomes of experiments that have not been conducted - and suggest labels in patents, to better call out such examples." [emphasis added by Law Pundit]

We quote Freilich & Ouellette in USPTO should require prophetic examples to be clearly labeled to avoid confusion as posted June 18, 2019 by Lisa Larrimore Ouellette to Written Description:

"Prophetic examples may be familiar to patent drafters, but scientists and engineers who learn about them generally describe them as bizarre, and even some patent scholars are unfamiliar with the practice."

Our opinion is that it is high time in patent law -- and it has been high time for decades -- to reduce the granting of patents to discoveries actually made and implemented and not to the patenting of ideas or future expected results, which has always been forbidden by law in principle. Prophetic examples are ideas, not discoveries, and should play zero role in the granting of patents.