by Dennis Crouch
The Federal Circuit's recent decision in In re McLeay offers a glimpse into the evolving relationship between utility and enablement in patent law. Although the decision is short and non-precedential, I think it offers some important insights on how both the USPTO and Federal Circuit judges are thinking about the issues.
In affirming the USPTO's rejection of claims for treating COVID-19 with aerosolized ribavirin, the court's February 18, 2025 ruling (No. 23-2338) shows that the Full Scope Enablement Doctrine has effectively assumed the gatekeeping role traditionally assigned to Section 101's Utility Doctrine -- especially for pharmaceutical treatment claims. This shift reflects a broader pattern where enablement requirements under Section 112 are increasingly shouldering the substantive work of ensuring inventions are genuinely useful—work that the relatively permissive Utility Doctrine has largely abandoned. I enjoyed the case also noting that it was argued by the patent applicant's twin brother Bart McLeay (Kutak Rock LLP).
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