Is proof of efficacy required for a prior art reference to be enabling for anticipation?

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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. No, proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation. The MPEP 2122 cites a Federal Circuit decision that clarifies this point: “[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.” – Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006) This means that a prior art reference can be considered enabling and anticipatory even if it doesn’t provide evidence that the disclosed invention actually works as intended. The disclosure itself is sufficient for anticipation purposes. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Utility Is Not Needed for Anticipation MPEP 2122 Required Claimed Compound Must Be Disclosed Without Utility MPEP 2122 Required Claimed Compound Disclosed Without Use MPEP 2122 Claim Anticipated by Reference 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 Design Must Be Substantially Identical for Anticipation MPEP 1504.02 Required Claim Must Be Considered as a Whole for Nonstatutory Double Patenting MPEP 1504.06 Required Patent Over One Year Old Is Prior Art MPEP 1504.06 Permitted Prior Art Structure Meets Intended Use Preamble MPEP 2111.02 Permitted 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 define &#8220;utility&#8221; in the context of prior art? How does the MPEP address utility disclosure in anticipatory references? Does a prior art reference need to di...