Lawyers suggest better labeling on prophetic patent applications

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A pair of lawyers, one with Fordham University, the other, Stanford Law School, have published a Policy Forum piece in the journal Science in which they decry the use of poor labeling on prophetic patent applications. In their paper, Janet Freilich and Lisa Larrimore Ouellette point out that it is possible to apply for and receive a patent on an invention that has not yet been demonstrated. They note that such applications can be confusing to scientists, who may not realize that claims made in such patents may not actually be true.

As Freilich and Larrimore Ouellette note, it is perfectly legal to apply for a patent for what they describe as "predicted experimental methods and results." They further note that it is a common practice in biology and chemistry research, especially when researchers are working on time-sensitive experiments. The reason a company would apply for a patent before actually creating a product is concern about being scooped by a competitor. Freilich and Larrimore Ouellette have no quarrel with the process. What disturbs them is the way that many researchers fill out their application forms.

They note that very often, researchers describe their prophetic projects as if they have already demonstrated that a technique works. To prove their point, they did a search on 100 randomly chosen patent applications found to be prophetic in nature—99 of them were written in a way that made it very difficult for non-lawyers to see that the patent author had not actually conducted the work of demonstrating the product. The problem arises when such applications are accepted and a patent is awarded. Typically, there is no second step for updating the application once researchers have demonstrated whether or not a technique works. This means that other researchers looking at the patents have no way of knowing if the work was ever actually conducted.

Freilich and Larrimore Ouellette note that there is a simple solution to the problem—to require appropriate labeling in applications. They also suggest encouraging people who write to avoid using language that fails to make a distinction between work that has been done and work that has not.


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More information: Janet Freilich et al. Science fiction: Fictitious experiments in patents, Science (2019). DOI: 10.1126/science.aax0748
Journal information: Science

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Jun 14, 2019
So called 'prophetic patents' were once illegal and their filer(s) charged with what amounted to charlatanism! That is all that need be said.

Jun 14, 2019
o1, you left out the reason for the policy change"

lawyer job security....

NOW "That is all that need be said.?"

Jun 14, 2019
In the past there was a requirement to "reduce to practice" - in other words actually make the invention. One of the reasons the requirement was relaxed was that it favored large companies over small inventors. If my company has a $100 million/year research budget and you are a single independent inventor then what could take you years I might be able to finish in days. Hardly fair.

There remains a requirement to "enable the patent". Vague and misleading language doesn't cut it for that. If you try and success requires "undue experimentation" or even if a person of ordinary skill in the art believes it would require undue experimentation then the patent is invalid.

As an example I have seen a patent that claims electrically conductive Al2O3 (sapphire). Sapphire is an excellent insulator and anything you do to it to make it conduct electricity would change it into something other than sapphire.

Jun 15, 2019
You really need to study like crazy to reach such deep and amazing conclusion.

Jun 18, 2019
A patent should only be issued for a fully functioning device (as outlined in the patent application).

Seemingly great ideas fail to pan out all the time when put to actual practice. Sometimes you can only see the flaw in the logic by building (at least trying to build) the device. And ocassionally you don't see the problem until you turn on (or mechanically operate) the device only to find that it does not do what was anticipated.

Of course if you don't have to have an actual, factual working device to prove your claims, maybe we can all patent our designs for perpetual motion machines. I never could get mine to work but it looks like that may no longer be an obstacle to getting a patent for it. After all, I may get it to work at some point in the future. Probably not (LOL) but that doesn't seem to mean a thing for a prophetic patent.

Only a fully functioning, proven, duplicatable device should ever be awarded a patent. Seriously.

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