Sufficiency/enablement of claims in the specification

Sufficiency/enablement of claims in a patent specification is defined as “patent description should sufficiently disclose the claimed matter in such a way that a person skilled in the art should carry out the invention with reasonable practice”. The requirement for sufficiency/enablement is provided under 35 USC 112.

In general, an ordinary person skilled in the art should be able to make or use the invention with reasonable practice. Failure to disclose in a sufficient manner may lead to rejection of the patent application.

Claims and form:

The specification should always end with one or more claims and out of the claims, at least one claim must be independent and depending on nature of the invention, there can be one or more dependent claims.

Best mode:

The specification should contain the best mode to make and use the invention. However, the best mode is not the ground for invalidating the patent. The best mode is what the inventor knows at the time of filing the invention, not something discovered after the patent filing.

Possession of the invention:

While filing a patent or before a particular time after the filing of the patent, inventor must provide a written description stating that he/she was in actually possessed the invention at the time of filing.

Limitations and distinguishing:

The specification should not only contain limitations of the claims but also explain how the invention distinguished from the prior art.


If the invention is just an improvement over other invention, then the description of that improvement is enough.

Use of the invention:

It is not necessary to explain the use of the invention if the enablement is understandable to an ordinary person skilled in the art. For example, in the case of chemical composition, for a person skilled in the art understands the composition without undue experiment, then the explanation for using the invention is not required, otherwise, enablement of the use is compulsory.

Types of inventions:

If the invention is electrical or mechanical, a method for performing a function and devices/apparatus for performing that task needs to be enabled. When the invention is an electronic circuit, function of the electronic circuit along with the components must be explained. When the invention is a semiconductor manufacturing, flowchart/steps to manufacture the semiconductor device must be enabled. When an invention is a software, a flowchart of performing a task and device for performing the task must be enabled. If the invention is a chemical composition, the composition of matter, use, examples and various alternatives of the composition must be enabled. If the invention involves biological activity, then the way of obtaining the microorganism or deposit location of the microorganism must be enabled. 

Sufficiency/enablement of the matter in the patent specification is very vital. Many of the patents have been invalidated and there many case laws that explain the importance of the specification. For example, MagSil Corp. vs. Hitachi Global Storage Technologies, Auto. Techs. Int’l, Inc. vs. BMW and Enzo Biochem, Inc. vs. Calgene.