What is the significance of “efficacy” in determining prior art operability for patent examinations?

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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. In patent examinations, the “efficacy” of a prior art reference is not a determining factor for its operability. As stated in MPEP 2121.02 : “A prior art reference provides an enabling disclosure and thus anticipates a claimed invention if the reference describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention; ‘proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.'” This means that: A prior art reference can be considered operable even if it’s not highly effective. The reference only needs to enable a person of ordinary skill to practice the invention. Lack of efficacy does not automatically disqualify a reference as prior art. Examiners focus on whether the reference enables the claimed invention, not on how well it performs. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Same Disclosure Required for All Prior Art Types MPEP 2121 Required Enabling Disclosure Requirement for Anticipation MPEP 2121 Required Examiner's Prima Facie Anticipation Case Requires Applicant Rebuttal MPEP 2121 Prior Art Must Enable Invention for Anticipation MPEP 2121 Operability Presumption for Anticipatory Prior Art MPEP 2121 No Discrimination Based on Nationality of Prior Art MPEP 2121 Evidence of Inoperable Compound MPEP 2121.02 Evidence of Unsuccessful Attempts to Make Compound Overcomes Rejection MPEP 2121.02 Relevant Time for Pre-AIA Inventions MPEP 2121.02 Reference Must Be Proven Inoperable to Overcome Anticipation MPEP 2121 Other Related FAQs 5 FAQs Collapse How does the AIA affect the relevant time for determining enabling prior art? What is the sig...