How do “working examples” influence the undue experimentation analysis in patent applications?
“Working examples” play a significant role in the undue experimentation analysis as one of the Wands factors. This factor considers:
- The presence and number of working examples in the specification
- The relevance and completeness of the examples
- How well the examples illustrate the invention’s operability
As stated in MPEP 2164.01(a):
“The presence or absence of working examples is relevant to the enablement inquiry.”
Working examples can significantly reduce the amount of experimentation required to practice the invention. They provide concrete evidence that the invention is operative and can be made and used as claimed. In fields with low predictability or for complex inventions, the presence of detailed working examples can be crucial in demonstrating that the invention can be practiced without undue experimentation. Conversely, the absence of working examples, especially in unpredictable arts, may suggest that more experimentation is needed, potentially rising to the level of “undue.”
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