What is the relationship between the enablement requirement and the utility requirement?
The enablement requirement under 35 U.S.C. 112(a) is closely related to the utility requirement under 35 U.S.C. 101. The MPEP 2164.04 references this relationship:
“See also In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995) (citing In re Bundy, 642 F.2d 430, 433, 209 USPQ 48, 51 (CCPA 1981)) (discussed in MPEP § 2164.07 regarding the relationship of the enablement requirement to the utility requirement of 35 U.S.C. 101).”
Key points about this relationship include:
- If an invention lacks utility, it cannot be enabled because one cannot use an invention that has no utility
- However, an invention with utility might still fail to meet the enablement requirement if the specification doesn’t teach how to make and use the invention without undue experimentation
- Examiners should consider both requirements when evaluating patent applications
For a more detailed discussion, refer to MPEP 2164.07.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2164.04 - Burden On The Examiner Under The Enablement Requirement,
Patent Law,
Patent Procedure