What is the difference between operability and enablement in patent law?

What is the difference between operability and enablement in patent law?

In patent law, operability and enablement are related but distinct concepts. According to MPEP 2121:

Operability refers to whether an invention actually works as described. A reference is considered operable if the disclosed invention functions as claimed.

Enablement, on the other hand, relates to whether the disclosure provides sufficient information for a person of ordinary skill in the art to make and use the invention without undue experimentation.

The MPEP states: “A reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the effective filing date of the claimed invention for applications or patents subject to the first inventor to file provisions of the AIA or before the date of invention for applications or patents subject to pre-AIA law.”

Key differences:

  • An invention can be operable (it works) but not fully enabled (the disclosure doesn’t provide enough information).
  • A prior art reference can be considered for obviousness even if it’s not fully enabled or operable.
  • Enablement is a requirement for patentability under 35 U.S.C. 112(a), while operability is more closely related to utility under 35 U.S.C. 101.

To learn more:

Topics: MPEP 2100 - Patentability, MPEP 2121 - Prior Art; General Level Of Operability Required To Make A Prima Facie Case, Patent Law, Patent Procedure
Tags: Enablement, Operability, patent law