The USPTO rule clarifying prophetic patents doesn’t fix the problem
Contreras 22 – Jorge L. Contreras is a Professor at the University of Utah S.J. Quinney College of Law, with an adjunct appointment in the Department of Human Genetics, University of Utah School of Medicine. His interests include intellectual property law, antitrust law, technical standardization and science policy. “Patent reality checks: Eliminating patents on fake, impossible and other inoperative inventions” 05/19/22, 102 J. Patent & Trademark Off. Soc'y 2 (2021), University of Utah College of Law Research Paper No. 480, https://ssrn.com/abstract=3997942
Among the many leniencies that are offered to applicants is the ability to support claims through the use of prophetic examples—experiments that were never conducted—in the patent specification.65 Recently, the USPTO adopted much-needed rules requiring applicants to more clearly identify prophetic versus actual experiments.66 This measure was adopted, in part, at the urging of Senator Thom Tillis, who based his recommendation on recent work by Professors Lisa Ouellette and Heidi Williams.67 For obvious reasons, clarifying that experiments described in a patent specification were not actually conducted is important. Yet this clarification does not itself eliminate the fundamental problem caused by the use of prophetic examples. As Ouellette and Williams note, their proposed clarification does not address the larger question “whether patents on completely untested inventions should be allowed.”68 The time to answer that question is now.