“Understanding the Importance of Prophetic and Working Examples in Patent Applications: A Comparative Analysis of US, Indian, and Chinese Practices”
Understanding the New USPTO Guidelines for Patent Applicants
The United States Patent and Trademark Office (USPTO) recently published a notice titled “Properly Presenting Prophetic and Working Examples in a Patent Publication.” This notice, while seemingly complex, offers clear benefits to the public and patent applicants who rely on patents for future innovative endeavors.
Defining Prophetic and Working Examples
For a patent application to be complete, it must include a written description of the invention and an example of its use. These examples can be either prophetic or working. Prophetic examples, also known as paper examples, are theoretical and have not yet been tested. Working examples, on the other hand, are based on successful experimentation.
The Importance of Correct Wording
The USPTO emphasizes that patent applicants must be careful not to submit any false or inaccurate data. This includes using the correct tense when describing a prophetic example. Using past tense implies the experiment has finished, which is not the case for a prophetic example. Therefore, prophetic examples should only use present or future tense.
Key Takeaways from the Notice
The notice provides several important takeaways for patent applicants. These include the validity of prophetic examples, the importance of distinguishing between prophetic and working examples, the correct tense to use when describing prophetic examples, and the necessity of clear and detailed descriptions.
Comparing Patent Guidelines in India and China
India’s Patent Guidelines
In India, the contents of the specification are defined under Section 10 of the Patents Act, 1970. The law does not specifically require the inclusion of working or prophetic examples. However, it does imply that an illustrative example could be one way of describing the manner in which the invention is to be performed.
China’s Patent Guidelines
In China, the laws governing patent applications do not provide specific requirements on patent application descriptions. Instead, they state that patent applications will be rejected if there is insufficient disclosure by the applicant. Unlike the US, China does not require patent applicants to differentiate between prophetic and working examples in their patent application description.
Time for Change in Patent Guidelines
While neither Indian nor Chinese patent law specifically prescribes the requirement of inclusion of working or prophetic examples, it may be time for a change. In India, it is recommended to include at least one example in the specification, particularly in the case of chemical or pharmaceutical related inventions. In China, lawmakers should consider revising the relevant laws to add consideration of prophetic and working examples in patent examination.
In conclusion, the new guidelines introduced by the USPTO provide clear benefits to patent applicants. By understanding and adhering to these guidelines, applicants can improve the quality of their patent applications and increase their chances of success in their innovative endeavors.