Post by Janet Freilich
Patent law – like many areas of private law – is riddled with unusual, obscure, and sometimes incomprehensible rules. In a forthcoming paper, I draw attention to a particularly puzzling doctrine of patent law: patents can include fictional experiments and made-up data. Take, for instance, the following experiment published in a recently granted patent:
“A 67-year old male has pancreatic cancer…He is provided with A. paucinervis pomel extract [the patented invention] for three years. The patient is examined later and…[h]is tumor is reduced in mass…”
What appears at first glance to be a groundbreaking finding is, unfortunately, merely a fictional experiment with a made-up result.
Though normally the phrase ‘made-up data’ would trigger accusations of fraud, in the context of patents, making up data is not fraud. Both the PTO and the Federal Circuit have found such made-up data to be permissible in patents and, for purposes of proving patent validity, fictional data in treated as largely equivalent to factual data.
These fictional experiments are called “prophetic examples” in the sense that the patentee is prophesizing what might have happened had the experiment actually been conducted. Somewhat surprisingly, they have flown entirely under the radar – there is no in-depth scholarship on the phenomenon.
I found the concept intriguingly strange and wanted to know more. In an empirical study of prophetic examples in 2 million chemistry and biology patents and applications, I found that 17% of experiments in patents are prophetic, and almost one quarter of patents contain at least one prophetic experiment. I further characterize who uses prophetic examples and provide some evidence as to when and why such examples are used. Perhaps most shocking is how prophetic examples are interpreted by scientists. Though some scholars have suggested that scientists ignore patents, a recent survey has found that scientists do read patents – but they clearly do not understand prophetic examples. I find that 99% of citations in the scientific literature to prophetic examples cite the example as if it were real.
Prophetic examples are clearly causing confusion and should no longer fly under the radar. I hope my study is a first step towards learning more.