Patent Killing Publications Presumed Enabled: Federal Circuit

The Court of Appeals for the Federal Circuit today made it harder for patent applicants and easier for PTO examiners when a patent application is rejected because of prior art. In Re Antor Media Corp., 2011-1465 (Fed. Cir. July 27, 2012). The key word here is  “enablement.”

A new patent is  supposed to be granted only if it is truly new. If there is already a patent or printed publication–prior art– that anticipates a claimed invention, a patent examiner can reject the application for a patent because the invention is not truly new.  When that happens, the applicant might try to convince the examiner that the prior art should not kill the invention because it doesn’t meet the enablement requirement.

Understanding the requirement begins with the idea that a patent grant is not like money for nothing. The inventor is supposed to give knowledge in exchange for the patent. The patent is supposed to teach anyone skilled in the field of the invention –the art–how to make and use the invention. If the proposed patent fails to teach a hypothetical ordinary person skilled in the art, the invention has not been enabled and no patent is granted.

But if enablement applies to a patent application, shouldn’t prior art have to meet the same requirement? Yes, and it does. The problem is who’s going to figure all this out.

If the examiner is left holding that particular bag, there are certain realities. The examiner has time limitations, can’t conduct experiments on prior art, and doesn’t know as much as the inventor knows about the invention in question. Faced with a stack of prior art disclosures, how are patent examiners going to figure out if the relevant ones meet the enablement requirement? Realistically, they often can’t.

The Federal Circuit faced up to this reality almost ten years ago. In Amgen Inc. v. Hoechst Marion Roussel, Inc. , 314 F.3d 1313, 1354 (Fed. Cir. 2003), they decided that when the prior art was in the form of a patent, that patent was presumed to be enabled. To keep a patent from killing your application, the burden was on you to try to prove that the patent didn’t meet the enablement requirement. The presumption applied before the PTO and in federal court.

Patents go through a pretty rigorous process after all, so the presumption wasn’t hard to accept. Today, however, the Federal Circuit extended that same presumption to printed publications that may not have gone through any review process at all:  “…we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling.”

The printed publication that kills your patent might be something as quick and informal as this post, but you had better be prepared to make a well supported argument if you attack it as failing the enablement requirement. The decision makes common sense given the realities of patent examination and puts the burden where it is most justifiable. Although Antor Media was an appeal from the rejection of a patent application, it will get really interesting to see if it the some presumption will apply when the subject is patent infringement.

About Craig Pinkus

Craig Pinkus is a partner in the Intellectual Property Group. He also is a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, entertainment, and other complex business arrangements. He has conducted trials and arbitrations throughout the United States and has argued appeals before the Seventh, Sixth and Federal Circuit Courts of Appeal, the Indiana appellate courts, and United States Supreme Court.
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