USPTO Supports Presumption Of Enablement For Printed Prior Art References

The U.S. Patent and Trademark Office ("USPTO") recently asserted that patent examiners should not bear the burden of proving that prior art printed publications are enabled. The USPTO's position, stated in its brief to the U.S. Supreme Court in Finjan v. USPTO, comports with the Federal Circuit's July 2012 holding in In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012). In that case, the Federal Circuit held that prior art patents and printed publications used to anticipate an application during examination are presumed enabled. Id. at 1287-1288. According to the Federal Circuit, "the burden shifts to the applicant to submit rebuttal evidence of nonenablement" once an examiner has shown that an application is anticipated by a printed publication. Id. at 1289.

The USPTO also conceded that, unlike U.S. patents, printed publications are not examined for enablement. However, the Supreme Court is nonetheless expected to apply the Federal...