What factors are considered in determining undue experimentation?

The determination of whether experimentation is undue involves considering multiple factors. According to MPEP 2164.01(a), these factors include, but are not limited to:

• The breadth of the claims
• The nature of the invention
• The state of the prior art
• The level of one of ordinary skill
• The level of predictability in the art
• The amount of direction provided by the inventor
• The existence of working examples
• The quantity of experimentation needed to make or use the invention based on the content of the disclosure

These factors, known as the Wands factors, were established in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). It’s important to note that:

“It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. The examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole.”

To learn more:

• undue experimentation
• Wands factors
• enablement analysis
• patent examination