Bindu Donovan, Sumaiya Sharmeen and Maggie Dowling wrote this article entitled "Enablement Standard Insights From Fed. Circ. Agilent Ruling" for Law360 which discusses the Federal Circuit’s June 2025 decision in Agilent Technologies Inc. v. Synthego Corp. and its clarification of the distinction between the enablement standards under 35 U.S.C. § 102 and § 112. The article explains that, for anticipation under § 102, a prior art reference is presumed enabling and need only enable a single embodiment of a challenged claim, whereas § 112 requires the patent specification to enable a person of ordinary skill in the art to use the claimed invention. Key takeaways for practitioners include the doctrinal separation of enablement standards, the substantial evidence review standard for PTAB findings, and the strategic use of prophetic examples in patent drafting.
Read the full article.
Bindu DonovanPartner
Sumaiya SharmeenAssociate
Maggie G. DowlingAssociate