Labeling prophetic examples by verb tense causes confusion

Labeling prophetic examples only by verb tense creates the risk of confusion. Freilich (2019) documents empirical evidence that the potential costs of prophetic examples are quite large. The obvious concern that arises with prophetic examples is that people either cannot or do not distinguish between prophetic examples and working examples in practice. As noted above, the two types of examples can be distinguished in theory, because USPTO policy requires working examples to be written in past tense, whereas prophetic examples are generally written in either present or future tense. Despite this distinction, Freilich (2019) documents that prophetic examples are most often cited as if they were in fact real working examples: of 100 randomly selected patents that use only prophetic examples and that are cited in a scientific publication for a specific proposition, 99 are cited in a way that—incorrectly—treats the prophetic example as a real example, such as by saying that an experiment “had been carried out” by authors of the cited patent. Freilich and Ouellette (2019) also point out that lack of knowledge about the verb tense rule that distinguishes types of examples is made worse in cases where patents are translated for filing in international patent offices, since differences in tenses in English-language patents may quite literally be lost in translation. With these translated versions, patent examiners and scientists in other countries may be unable to distinguish real and hypothetical data. Flagging prophetic examples only through verb tense may also confuse other audiences that are unfamiliar with this subtlety of U.S. patent law, such as investors who use patents to better understand a firm’s technology, or even scholars of the patent system. In contrast with these social costs, there is no legal benefit to patentees from labeling their predictions only by verb tense (Freilich and Ouellette 2019). Inventors who want to file patents on untested inventions can do so without presenting their predictions in the form of fictitious experiments— they can also obtain a patent with more general discussion about contexts in which the invention is expected to work (e.g., “Based on these animal trial results, this compound is expected to reduce the mass of pancreatic cancer tumors in adult humans”). Taken together, we think there is a straightforward case for requiring that prophetic examples be more clearly delineated as such. The only benefit for patentees that would be lost through this change is any benefit that comes from misleading investors and other patent readers, which is not a net benefit from society’s perspective. Clearer labeling would reduce the costs that stem from confusion, enhancing the patent system’s goals of inducing researchers to disclose accurate information about new inventions and reducing duplication of inventor effort.