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[Riya]

How does examiner determines whether the invention being claimed actually works or not?

To my surprise, a client revealed that they had a patented an appratus which in actual does not yield the product or yields v.bad quality product with poor quantity.

Shouldn't there be a way to avoid grant of such patents?

[JimIvey]

It might have problems with utility.  That would be the case if something highly unlikely were to be claimed, such as perpetual motion, time travel, etc.

However, if someone has a claim that prevents others from making, using, selling something that doesn't work, so what?  Suppose I could prevent car manufacturers from welding wheels of a car into a fixed, non-rotating position.  I doubt they'd be beating a path to my door to license my technology.  I also doubt they'd make an infringing car so I could pop up like the ever-feared patent troll.

Regards.

[Robert K S]

I think the problem is less likely to be claims that do not yield an operable invention when practiced--as covered in MPEP 2107.01 (II)--but rather claims not backed by enabling disclosure.

In the former case, the MPEP expressly advises "Office personnel should not label an asserted utility 'incredible,' 'speculative' or otherwise unless it is clear that a rejection based on 'lack of utility' is proper."

In the latter case, "A patent claim is invalid if it is not supported by an enabling disclosure."  Does the PTO issue claims that are not fully enabled?  Sure.  (But the PTO makes issue mistakes in every category, so why single this one out?)  Are patents ever ruled invalid for lack of enablement?  Yep.

MPEP 2164 is an excellent read for any practitioner, no matter how experienced.

[orangequant]

On November 1 [2005] Boris Volfson of Huntington, Indiana, received U.S. Patent 6,960,975 for his design of an antigravity space vehicle...
powered by a superconductor shield that changes the space-time continuum in such a way that it defies gravity. The design effectively creates a perpetual-motion machine...
Perpetual-motion machines have long held special appeal for inventors—particularly during the concept's heyday around the turn of the 20th century.
Patent applications on such devices became so numerous that by 1911 the patent office instituted a rule that perpetual-motion machine concepts had to be accompanied by a model that could run in the office for a period of one year.
http://news.nationalgeographic.com/news/2005/11/1111_051111_junk_patent.html
-------------------------==================
  it appears that sometimes it's impossible to know if an invention can be practiced

[JimIvey]

Great.  Not only a silly patent, but something for examiners to cite when someone actually does invent an antigravity device!   

Regards.

[Robert K S]

The applicant in that case actually filed a petition for the application to be made special on the grounds that "superconductivity is advanced".  (The petition was rendered moot when the application was allowed less than three months after it was filed(!!).)

I am surprised the PTO didn't reject claim 1 for at least the reason that it positively recited a human being (see this thread).

The inventor never paid the first maintenance fees and the patent expired.

[JimIvey]

The inventor never paid the first maintenance fees and the patent expired.

Given that the Spec taught how to manipulate the space-time continuum, I wouldn't assume that the maintenance fees will remain unpaid.   

Regards.

[MYK]

The inventor never paid the first maintenance fees and the patent expired.

Given that the Spec taught how to manipulate the space-time continuum, I wouldn't assume that the maintenance fees will remain unpaid.   

Regards.

ROFL.

[2ndcareer]

That was a PTO mistake, and they still teach that case today as a warning to new Examiners NOT to allow such patent applications.

But as general rule, the PTO will not question whether a claimed invention actually work, unless it is very unbelievable.  (cure for cancer, perpetual motion, time travel, etc.)


-As for the specific case originally posed in this thread, I would say, the client has only a potential problem in litigation or in interference.  If another party challenges the client's patent, they may assert that the client was not in fact "in possession of the invention at the time of the filing", by showing that the client did not disclose certain "essential features" that are required to make the invention work.

This would be a 112 enablement problem, because in fact the client did not actually make the device work, and thus did not know about any required additional features that would make it work.