What is the standard for determining if a claim with inoperative embodiments is still enabled?

The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):

“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”

This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.

To learn more:

• Enablement standard
• Skilled person
• Inoperative embodiments
• Patent claims