The Federal Circuit clarified the enablement standard for prior art in Agilent Technologies, Inc. v. Synthego Corp., invalidating key CRISPR patents. The case, argued by notable IP attorneys Mark Lemley and Edward Reines, establishes important distinctions between 35 U.S.C. § 112's enablement and anticipatory prior art under § 102. It notably upholds that abandoned patents and research still qualify as relevant prior art, emphasizing that prophetic examples can anticipate patents in unpredictable fields as long as they include adequate enabling disclosures. The court's consensus decision reflects significant changes in how prior art is evaluated in future patent litigation.
The unanimous Judge Prost decision also establishes that abandoned patent applications and research projects retain their full potency as prior art, rejecting arguments that abandonment should diminish their anticipatory effect.
In rejecting the appeal, the court reinforced that prophetic examples in prior art can serve as anticipating references even in unpredictable fields, provided they contain sufficient enabling disclosure.
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