How do working and prophetic examples relate to the enablement requirement?

Both working and prophetic examples play a crucial role in satisfying the enablement requirement for patent applications. The MPEP 2164.02 explains:

“The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without an undue amount of experimentation.”

This means that:

• Working examples can provide direct evidence that the invention is enabled and can be practiced by those skilled in the art.
• Prophetic examples can demonstrate the inventor’s conception of how the invention might work, potentially satisfying enablement if they provide sufficient guidance.
• The key is whether the examples, whether working or prophetic, provide enough information for a person skilled in the art to practice the invention without undue experimentation.

It’s important to note that while examples can be helpful, they are not always necessary if the specification otherwise provides sufficient enablement. The adequacy of the disclosure must be determined on a case-by-case basis, considering the nature of the invention and the state of the art.

To learn more:

• working examples
• prophetic examples
• enablement requirement
• patent disclosure