Fitch, Even, Tabin & Flannery LLP: Presumption of Enablement Extended to Prior Non-Patent Publications

Fitch, Even, Tabin & Flannery LLP: Presumption of Enablement Extended to Prior Non-Patent Publications

By Kendrew H. Colton

On July 27, 2012, in In re Antor Media Corporation, the Federal Circuit held in a case of apparent first impression that a prior printed publication cited as prior art by a patent examiner is presumptively enabling, absent any showing to the contrary by a patent applicant or patentee.

Antor Media appealed from a decision of the U.S. Patent and Trademark Office (USPTO) Board of Patent Appeals and Interferences ("the Board") that affirmed rejections in an ex parte reexamination over printed publications. Antor Media argued that a research publication was not enabling and that the Board erred by holding prior art publications cited by an examiner are presumptively enabling.

The Federal Circuit acknowledged that a prior art reference cannot anticipate a claimed invention if the alleged anticipatory disclosures would not enable a person skilled in the art to practice the claimed inventions. In earlier decisions, the court recognized that a prior art U.S. patent is presumed to be enabling regarding both claimed and unclaimed disclosures, and cited Amgen Inc. v. Hoechst Marion Roussel, Inc. [enhanced version available to lexis.com subscribers].

According to the court, "by logical extension" of the Amgen ruling, "a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee." The court reasoned that "It would be overly cumbersome, perhaps even impossible, to impose on the PTO the burden of showing that a cited piece of prior art is enabling. The PTO does not have laboratories for testing disclosures for enablement."

The court added that since "unclaimed disclosures [in a] patent are ... not examined by the PTO at all" but still receive "a presumption of enablement during prosecution of a later patent [application], there is no reason why printed publications, which ... also lack the scrutiny of examination, should not logically receive the same presumption for the same reasons."

According to the court, "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."

Therefore, as long as the examiner presents a prima facie case of anticipation, and gives adequate notice to the applicant for patent or patentee of the rejection and the basis for it, the burden shifts to the applicant or patentee to submit rebuttal evidence of non-enablement..

The court-created presumption may become more significant as new prior art definitions in the America Invents Act become effective, and once the USPTO promulgates its final rules package for the new prior art provisions. In particular, this decision should be carefully considered in view of the effective date of prior art in new 35 U.S.C. 102(a) and in view of the upcoming effective date for the first-to-file provisions in the America Invents Act.

If you have questions concerning this decision, please contact Fitch Even partner Kendrew H. Colton, the author of this alert.

© Copyright 2006-2012 Fitch, Even, Tabin & Flannery LLP - All Rights Reserved

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