In the world of patent law, “enablement” is a critical concept. But what many don’t realize is that how much enabling detail is required depends heavily on what you’re trying to do—get a patent or invalidate one.
That distinction came into sharp focus in the recent case of Agilent Technologies v. Synthego, and it hinges on a deceptively simple but powerful principle: To secure allowance on a claim in a patent application, you have to enable sufficient embodiments to satisfy the scope of the claim. But to invalidate a patent claim, you only have to show prior art enablement of one embodiment that falls within the scope of the claim. The distinction isn’t new but it’s nice to see the rule clearly delineated.
The Two Faces of Enablement
Under Section 112 of the Patent Act, an inventor who applies for a patent must fully enable the entire scope of their claimed invention. This is to ensure that patent holders don’t gain broader exclusivity than their disclosure justifies. In other words, you can’t just describe one version of an invention and claim all possible variations—you have to teach the public how to make and use all of what you’re claiming.
That’s exactly what the Supreme Court reinforced in Amgen v. Sanofi. There, the Court invalidated Amgen’s patent because it covered a broad set of antibodies, but only disclosed a few actual working examples. The rest would require painstaking trial-and-error to figure out, which the Court found unacceptable.
But in Agilent v. Synthego, the Federal Circuit drew a sharp line.
When it comes to anticipatory prior art—that is, prior publications that can invalidate a patent—the rules are different. Prior art does not need to enable every version of the claimed invention. It only needs to enable one working embodiment.
A Research Proposal as Prior Art
Agilent’s patents related to chemically modified guide RNAs (gRNAs) that resist degradation in CRISPR gene-editing. Synthego challenged these patents by pointing to an abandoned patent application from Pioneer Hi-Bred. This old application described broad, theoretical possibilities for modifying gRNAs—but it:
- Contained no proven examples
- Proposed quadrillions of combinations
- Was ultimately withdrawn after failing to work
Agilent argued that this reference wasn’t enabling at all—it was more of a research proposal than a working invention. And they leaned heavily on Amgen, saying that just like in that case, the disclosure was far too vague and would require unreasonable experimentation.
But the court rejected this argument, and here’s why:
Amgen was about how much you need to disclose when you’re trying to get a patent.
Agilent was about how much is needed in prior art to block someone else’s patent.
The bar is simply much lower in the latter.
Why This Matters
By refusing to apply Amgen’s strict enablement standards to the Pioneer Hi-Bred prior art, the court effectively created a firewall.
This firewall draws a clear line between:
- Section 112 enablement: For your patent to be valid, you must enable the full scope of what you’re claiming.
- Prior art enablement: To defeat novelty, a reference must only enable a single embodiment—a single working version of what’s being claimed.
This distinction has profound implications.
The Power of Prophetic Prior Art
What’s especially striking is that the Pioneer Hi-Bred application was never proven to work and was ultimately abandoned. It consisted largely of prophetic examples, many of which turned out to be false or at least unproven.
But the court said that didn’t matter.
If even one of those prophetic examples was enabling—if a person of ordinary skill in the art could read the disclosure and reasonably make it work without undue experimentation—then the entire patent could be invalidated.
Key Takeaway
If you’re seeking a patent, courts will hold you to the high enablement standard of Amgen: you must teach others how to make and use your invention across its full scope.
But if you’re trying to invalidate someone else’s patent, even a speculative, abandoned patent application can do the job—so long as it enables one embodiment.
That’s the takeaway from Agilent v. Synthego:
In patent law, not all enablement is created equal.