How does the MPEP define “utility” in the context of prior art?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. The Manual of Patent Examining Procedure (MPEP) 2122 defines utility in the context of prior art as follows: “Utility need not be disclosed in a reference to be properly applied as prior art under 35 U.S.C. 102 and 103.” This means that for a prior art reference to be valid, it doesn’t necessarily need to explicitly state the utility or usefulness of the invention it describes. The MPEP further explains that as long as the reference discloses the claimed subject matter, it can be used as prior art, regardless of whether it mentions the utility of the invention. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claimed Compound Must Be Disclosed Without Utility MPEP 2122 Required Utility Is Not Needed for Anticipation MPEP 2122 Required Claim Anticipated by Reference MPEP 2122 Claimed Compound Disclosed Without Use MPEP 2122 Design Must Be Identical to Prior Art MPEP 1504.02 Required Invention Must Not Be Anticipated by Prior Art MPEP 1504.02 Permitted Patent Over One Year Old Is Prior Art MPEP 1504.06 Permitted Prior Art Structure Meets Intended Use Preamble MPEP 2111.02 Permitted Inherent Teaching of Prior Art MPEP 2112 Inherency of Prior Art Characteristics Must Be Proven MPEP 2112 Other Related FAQs 5 FAQs Collapse What is required for a reference to be anticipatory prior art? Can a compound be anticipated if its use is not disclosed in the prior art? How does the MPEP address utility disclosure in anticipatory references? Is proof of efficacy required for a prior art reference to be enabling for anticipation? Does a prior art reference need to disclose utility to anticipate a claim?