If a patent has been issued for a system of the sort defined in the title of this post (a larger system with one, unproven general device) am I precluded from developing a similar system in which I have created and specified the "miraculous device?"

As a silly, exaggerated example, what if a patent actually issues for a Personal Flying Machine with claims similar to the following: "... comprises a ramp, a cable, and a bicycle (where flying bicycle is comprised of pedals, handlebars, and wheels) ..."

Assume that the Personal Flying Machine just might work but ONLY if the bicycle had a few more (unspecified) pieces. In this case, the modified bicycle is the key technology that makes the whole system work. It has not been built or publicly demonstrated to work.

If I, in fact create this special bicycle subsystem, am I not allowed now to build the Personal Flying Machine system just because someone else dreamed up a crazy idea that he did not know how to implement?

I hope there is hope for me in this situation because I have been working down in the "nuts and bolts" of a subsystem for the purpose of enabling a larger system, only to find a very recent patent of the system without proof that it works (and few details of the key parts).

I appreciate intelligent help/comments. Thank you


The specification must enable one of ordinary skill in the field to make and use the claimed invention without undue experimentation. But it doesn't need to work well, or cost-effectively or reliably to be valid. USPTO MPEP 2164 Enablement Requirement. Also, the inventor does not need to prove it works unless it calls for violating the known laws of physics.

If the patented system really couldn't be made to work at all based on the disclousure at the time it was filed, and that was clear to the examiner, it should not have been issued. However examiners normally do not question something that seems feasible on its face. The USPTO does not do any experiments or in-depth research to see if a specification is enabled. In rare cases they can assert that they think the invention has "incredible utility" and require the inventor to prove that it works. USPTO MPEP 2107.1 II Wholly Inoperative Inventions.

Someone in your position could decide to practice the patent with the plan to defend themselves in an expensive law suit with the argument that the patent is invalid due to non-enablement. Or they could approach the patent owner with the idea that they should work together. Presumably the inventor can't make money on the patent if they do not have a good way to make it work. Or maybe the magic subsystem is so cool that it can be used to make a different overall system.

  • Thank you, George. Indeed, I have considered working with the patentee. Side note for a disappointing day: seems that the whole patent system motivates nebulously defined half-baked patents that SOUND or SEEM credible. Seems also that the author of the old Dick Tracy cartoons could have patented the Mobile Phone (or wrist watch radio) back in the 1930's if he had gotten past a patent examiner. Thanks again. – SirCut Jan 28 '13 at 16:20
  • I have gone back and edited my answer a few times to improve it - adding links, for example. If there is a concern that its information is not accurate I would appreciate a specific comment so I can improve it. – George White Jan 28 '13 at 21:53
  • George is correct. Enablement, the principle George described, seems to be something that comes out primarily in litigation, and not in procuring the patent. If I were an inventor facing such a patent, I would consult with a patent litigator to gauge the likelihood that a successful suit could be brought. If there are serious enablement issues, the patent shouldn't give the patentee much leverage. – m3lvn Jan 28 '13 at 22:00

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