(This article was first published in Science on June 14, 2019.)
Although it may surprise scientists, one can receive a patent in many jurisdictions without implementing an invention in practice and demonstrating that it works as expected. Instead, inventors applying for patents are allowed to include predicted experimental methods and results, known as prophetic examples, as long as the examples are not written in the past tense (1–3). Allowing untested inventions to be patented may encourage earlier disclosures about new ideas and provide earlier certainty regarding legal rights—which may help small firms acquire financing to bring their ideas to market. Yet granting patents too early may also discourage researchers from doing the work to bring ideas to fruition (4, 5). Even if allowing untested inventions to be patented is desirable, we think prophetic examples deserve closer scrutiny, and clearer labeling, because of the likelihood that they are unnecessarily confusing—particularly to scientists, many of whom read patents but are unlikely to appreciate that not all the claims are based on actual data.
(Continue reading the article on Science’s page here.)
Lisa Larrimore Ouellette is an Associate Professor at Stanford Law School. Her scholarship addresses empirical and theoretical problems in intellectual property and innovation law. She takes advantage of her training in physics to explore policy issues such as the integration of IP with other levers of innovation policy, the patenting of publicly funded research under the Bayh–Dole Act, the value of scientific disclosures in patents, and the polarized public discourse over IP. She has also written about how online search results could address the evidentiary problem of trademark distinctiveness, the value of online surveys in First Amendment cases, and about the potential for different standards of review to create what she terms “deference mistakes” in numerous areas of law.