What is the significance of “predictability in the art” for patent enablement?

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.

The predictability in the art is a significant factor in determining whether a patent specification meets the enablement requirement. MPEP 2164.05(b) states:

“The state of the prior art and the predictability of the art are inherently intertwined and are often evaluated together.”

The significance of predictability in the art for patent enablement includes:

• Disclosure Requirements: In unpredictable arts, more detailed disclosure is typically required to satisfy enablement.
• Scope of Claims: Highly predictable arts may allow for broader claim scope with less disclosure.
• Experimentation: Less predictable arts may require more experimentation, potentially leading to undue experimentation concerns.
• Examiner’s Analysis: Examiners consider the predictability of the art when evaluating whether the disclosure is sufficient.

Applicants should be aware that in less predictable fields, such as biotechnology or chemistry, they may need to provide more comprehensive specifications to meet the enablement requirement.