Three additional statutory requirements are set forth in 35 U.S.C. § 112. These requirements include the written-description requirement, the enablement requirement and the best-mode requirement.

The purpose of the written-description requirement is to establish that the applicant was in possession of the invention. An applicant must convey with reasonable clarity that he or she was in possession of the invention at the time of filing to satisfy this requirement. The test for the written-description requirement is whether the disclosure of the application “reasonably conveys” to a person skilled in the art that the inventor had possession of the claimed subject matter at the time of filing.

The enablement requirement is separate and distinct from the written-description requirement. The enablement requirement requires that an application contains sufficient information regarding the subject matter of the claims to enable one skilled in the art to make and use the claimed invention. The test for the enablement requirement is whether the experimentation needed to practice the invention is undue or unreasonable. A key point with respect to the enablement requirement is that the USPTO generally does not perform any scientific or physical tests to determine whether a patent application is enabling. As a result, the issue of enablement may first arise in litigation.

The final statutory requirement that we will address in this section is the best-mode requirement. An inventor is required to disclose the best mode of his or her invention. The best mode is determined at the time of invention. The standard under the best-mode requirement is subjective so that an inventor need only disclose what he or she believes is the best mode. As a result, if an inventor erroneously believes that he or she disclosed the best mode, the inventor still satisfies the requirement.

The purpose of the best-mode requirement is to keep inventors from concealing the best mode of their invention from the public. An applicant should also recognize that some foreign countries do not require the disclosure of the best-mode. As a result, patent applications that originate from those countries should be scrutinized before filing to make sure that they include this feature.

Unlike the statutory requirements of utility, novelty, and nonobviousness, each of the three statutory requirements that are discussed in this blog entry can be satisfied by preparing a complete patent specification. Consequently, an applicant should examine a draft specification carefully to make sure that it meets all of these requirements.