Prophetic examples — also called “paper”, “speculative”, or “hypothetical” examples — are sometimes included in patent specifications to describe unperformed experiments.  In contrast to working examples, which describe actual experiments and results, prophetic examples may describe predicted or simulated outcomes (e.g., in silico data).

In academic circles, and in most contexts, making up data is considered fraudulent or misleading and is generally frowned upon. However, this is not the case with patent applications, where it is perfectly acceptable to supply predictive rather than measured data (provided it is clearly identified as such), and there may be a variety of valid reasons to include such examples. There are, however, some important caveats.

Such prophetic examples can be important in demonstrating that the patent applicant has in fact arrived at the purported invention, and in supporting the breadth of claim scope being pursued (or, in oppositions or litigation, defended). In particular, soundly reasoned and presented prophetic examples may be used in a patent specification to extrapolate the applicability of a new idea to other applications to which there is some plausible scientific basis that the new idea will successfully operate, and to therefore justifiably draw a patent claim to that new use.

Why include prophetic examples in a patent specification?

A patent specification often includes one or more examples of how the invention can be practiced. However, these examples may not have been physically performed at the time of filing, especially when early filing is crucial to secure priority.

There may be a number of reasons for this, including a lack of time, e.g., in rapidly evolving technologies where there can be a race to file patent applications for new technology. Other reasons may be the expense required to do the work in the laboratory is prohibitive, or that the number of experiments required is physically impossible to do within a reasonable time period.

Examples in a patent application are not strictly required, but generally assist the patent applicant in complying with the various written description requirements for a valid patent in Australia and other jurisdictions. In Australia, section 40 of the Patents Act 1990 (Cth) requires that the invention be clearly and completely described (sufficiency), that claims are supported by the description, and that the best method known to the applicant is disclosed. This requires that the patent specification provide sufficient information to enable the skilled person to perform the invention across the full scope of the claims (not just one embodiment within the scope of each claim) without undue burden or the need for further invention.

Ideally, the patent applicant would physically perform many examples of the invention to show that it can be implemented over the entire scope of the claims, but because it may be impractical to do so it is sometimes necessary to create prophetic (yet to be performed) or predictive protocols that describe how the invention is to be performed (including how effectiveness can be measured or observed, etc).

Providing prophetic examples can therefore help to meet the requirements of sufficiency, by clearly disclosing to the skilled reader how to perform the invention across the scope of all claims.

When to include prophetic examples in a patent application?

Circumstances where prophetic examples might be employed include where the patent applicant has developed a new and inventive material, and where it is scientifically plausible that the new material would perform the same or similarly to prior art materials in a known process. Under these circumstances, a prophetic example directed to the use of the new material in that prior art process may be sufficient, particularly if reasoning as to why the new material might be suitable for that use is included.

Similarly, prophetic examples may be employed where the patent applicant has devised a new concept which has certain advantages over the prior art, and undertaking each of the individual steps of the method is known with a predictable outcome. In this case there may be an invention in a new combination of those steps (particularly if performed in a particular order or manner). Under these circumstances, it may be scientifically plausible that the new combination of those (known) method steps will result in those advantages, and prophetic examples will be sufficient.

Prophetic examples can be distinguished from examples which provide a proxy for actual test results. For example, in the pharmaceutical arts some data or information that demonstrates some substantial likelihood that the invention will work as a human pharmaceutical is required. Often, animal studies or at least in vitro testing results will be provided and are usually sufficient to provide the required enablement, depending upon the invention and the type and scope of claims to be pursued.

Prophetic examples also help provide for the “support” requirement by justifying the technical contribution’s breadth. Reasoned examples help convince Examiners or judges that the claims are not overreaching.

They can also be crucial for meeting Australia’s “best method” requirement, which mandates that the best method of performing the invention known at the filing date (often the PCT date) be disclosed. This requirement has become a common ground for revocation and an emerging examination issue.

Advice for patent applicants

Prophetic examples can support broad claims without requiring expensive or time-consuming experiments. They are particularly useful for meeting sufficiency and best method requirements. However, they must be well-reasoned, scientifically plausible, and reproducible.

Applicants should assess how predictable the invention’s technical effect is. The more unpredictable the effect, the more real data is needed. Where plausible technical explanations support the invention’s claimed effect, prophetic examples are generally acceptable.