Should Abandoned Applications Be Presumed Enabling? Supreme Court Asks for Response

"The Supreme Court has called for a response in Agilent Technologies, Inc. v. Synthego Corp., No. 25-570. The basic question in the case is whether printed publications asserted as anticipatory prior art should be presumed enabling, and whether the Federal Circuit's holding in Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. Cir. 2005), that "proof of efficacy is not required" for a reference to anticipate, should be vacated or narrowed."

"In this case, the allegedly anticipatory reference is an abandoned patent application filled with prophetic examples describing modifications that, according to Agilent, nobody has ever shown to work. The petition asks the Court to reconsider whether modern patent law has drifted too far from the principle articulated in Seymour v. Osborne, 78 U.S. (11 Wall.) 516 (1870), that a prior art reference must actually "communicate" the invention to the public in a meaningful sense to defeat a patent."

"The Supreme Court's call for response (CFR) carries some procedural significance. The Court receives thousands of certiorari petitions each year and grants fewer than 80. Most petitions are denied without any response from the opposing party. When the Court requests a response, it signals that at least one Justice believes the questions warrant fuller consideration. This does not mean certiorari is likely; most CFR cases still result in denial."

Supreme Court invited a response in Agilent v. Synthego to resolve whether printed publications used as anticipatory prior art should be presumed enabling. The case questions whether Rasmusson's rule that 'proof of efficacy is not required' for anticipation should be vacated or narrowed. The asserted prior art is an abandoned patent application with prophetic examples that allegedly never demonstrated practical utility. The matter raises whether modern patent law has strayed from Seymour's principle that a prior art reference must meaningfully communicate the invention to the public. The Court's engagement signals importance of enablement for anticipatory printed publications.

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