0

In addition to describing the invention, patent applications often contain content that predicts the improvements that the invention will have when implemented and pushed out to market.

For example:

"This system and method of the present disclosure will lead to higher success rates among the users of the system."

This, of course, is an unverified statement. It may or may be true when implemented.

How does the the patent examiner and judge treat these type of language? What effect will this kind of language have on the odds or enforcement of patent application?

Improve this question
1
  • 1
    "Anticipation" means something different. I think the correct term for what you are describing is "prophetic".
    – bhuff36
    Commented Sep 6 at 9:15

1 Answer 1

Reset to default
2

How does the the patent examiner and judge treat these type of language?

Generally patent examiners will take your prophetic statements at face value (unless you're trying to patent cold fusion or something where they might tell you that "extraordinary claims require extraordinary proof"). Rarely, a declaration proving the results might be needed if necessary to establish unexpected results or the like, but gathering that evidence can be done post-filing.

At litigation time, any granted patents may be invalidated if the opposing counsel can show that the patentee made false claims regarding the invention. I imagine prophetic statements aren't held to the same standard as statements of actual tested performance, but I believe they can nevertheless tank the patent if they are too blatant or too numerous.

Improve this answer
4
  • If that is the case, is there any reason at all to include them?
    – Bear Bile Farming is Torture
    Commented Sep 6 at 16:20
  • 1
    @Bear Yes, because one of the requirements of patentability is utility - one has to explain what the invention is good for. If one is patenting at a time when one hasn't built a prototype that can be tested yet, most of the utility statements will have to be prophetic.
    – bhuff36
    Commented Sep 6 at 16:27
  • In that case, would it be wise to soften up the prophetic statements, such as This system and method of the present disclosure map lead to higher success rates among the users of the system. I.e. instead of "will", use "may" instead.
    – Bear Bile Farming is Torture
    Commented Sep 6 at 16:44
  • 2
    @Bear, maybe a slight improvement but I don't think it's a night and day difference. "Will" is already plenty sufficient to imply that you haven't conducted any proper experiments.
    – bhuff36
    Commented Sep 6 at 16:46

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .