Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
No, the enablement requirement does not necessitate a commercially viable embodiment of the invention. The MPEP clearly states:
“To comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, it is not necessary to ‘enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.’“
This principle is supported by the case CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed. Cir. 2003), where an invention for improving semiconductor wafer cleaning was deemed enabled by disclosing improvements to the overall system, without requiring a commercially perfect version.
To learn more:
MPEP 2164 – The Enablement Requirement (2)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
No, the enablement requirement does not necessitate a commercially viable embodiment of the invention. The MPEP clearly states:
“To comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, it is not necessary to ‘enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.’“
This principle is supported by the case CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed. Cir. 2003), where an invention for improving semiconductor wafer cleaning was deemed enabled by disclosing improvements to the overall system, without requiring a commercially perfect version.
To learn more:
Patent Law (2)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
No, the enablement requirement does not necessitate a commercially viable embodiment of the invention. The MPEP clearly states:
“To comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, it is not necessary to ‘enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.’“
This principle is supported by the case CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed. Cir. 2003), where an invention for improving semiconductor wafer cleaning was deemed enabled by disclosing improvements to the overall system, without requiring a commercially perfect version.
To learn more:
Patent Procedure (2)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
No, the enablement requirement does not necessitate a commercially viable embodiment of the invention. The MPEP clearly states:
“To comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, it is not necessary to ‘enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.’“
This principle is supported by the case CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed. Cir. 2003), where an invention for improving semiconductor wafer cleaning was deemed enabled by disclosing improvements to the overall system, without requiring a commercially perfect version.
To learn more: