Does the presence of inoperative embodiments within a claim’s scope automatically render it nonenabled?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

No, the presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled. The MPEP 2164.08(b) states:

“The presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled.”

The key consideration is whether a skilled person could determine which embodiments would be inoperative or operative without undue experimentation. This standard is based on the normal effort required in the art.