April 1, 2026 wasn’t a great day for Agilent Technologies, and it might not be a great day for patent holders who aren’t paying attention.
On that date, the Supreme Court declined to hear Agilent’s appeal in Agilent Technologies, Inc. v. Synthego Corp.1, closing the book on a multi-year legal fight and finalizing the invalidation of two CRISPR patents that Agilent had spent years developing and defending. The patents covered chemically modified guide RNAs: real technology, with real R&D behind it, granted by the USPTO after meeting the rigorous enablement standards required to put a patent in someone’s hands.
They were invalidated by a document that was abandoned before it ever went anywhere. A document full of experiments that, by Agilent’s account, had never actually been performed. A document that no peer reviewer had ever evaluated.
The Supreme Court looked at that situation and, without comment, let the lower court’s ruling stand.
If you hold patents, or are building the IP portfolio your company will depend on, that should get your attention.
What happened?
Agilent held two patents on specific chemical modifications to guide RNAs used in CRISPR-Cas9 gene editing: U.S. Patent Nos. 10,337,001 and 10,900,034. The modifications, which include 2′-O-methyl changes near the ends of the guide RNA, improve stability and reduce degradation of the gRNAs required for binding to target DNA in the CRISPR-Cas9 system.2 These weren’t trivial patents. They represented foundational biotech IP in one of the most competitive fields in modern science.
Synthego, a CRISPR solutions company and direct commercial competitor, challenged both patents at the Patent Trial and Appeal Board (PTAB) through inter partes review. The prior art they relied on was the Pioneer Hi-Bred patent application: a 2014 filing that had since been abandoned, consisting largely of prophetic examples. Prophetic examples are descriptions of experiments written as if they had been performed, when in fact they had not been.3
The PTAB invalidated both Agilent patents.4 The Federal Circuit affirmed.2 The Supreme Court declined to step in.1
The legal distinction you need to understand
At the center of this case is a gap in U.S. patent law that doesn’t get much attention outside of litigation circles, but that every patent holder should know about: the enablement standard for getting a patent granted is meaningfully different from the enablement standard for prior art used to challenge one.
To get a patent, your disclosure must satisfy 35 U.S.C. § 112. You have to enable a person of ordinary skill in the art to make and use the full scope of what you’re claiming, without undue experimentation. The USPTO scrutinizes this. Courts scrutinize this. The Supreme Court reinforced it in Amgen v. Sanofi in 2023, making clear that broad claims require broad enablement.2
Prior art used to challenge your patent operates under 35 U.S.C. § 102, which sets a considerably lower bar. A prior art reference only needs to enable a single embodiment of your claims, not the full scope. There’s also a presumption baked into the law that printed publications are enabling, which shifts the burden onto the patent holder to prove they’re not.2
Agilent had to meet a high bar to get their patents granted. The abandoned Pioneer Hi-Bred application, prophetic examples and all, only had to clear a much lower bar to take those patents down. The Federal Circuit found that acceptable.2 The Supreme Court, in declining to hear the case, left that finding intact.1
The Part That Should Bother You
Here’s the question worth sitting with: should an abandoned patent application carry the same anticipatory weight as a peer-reviewed publication, a patent that actually issued, or a disclosure based on work that was genuinely reduced to practice?
Under current law, the answer is yes. Abandonment doesn’t disqualify a prior art reference. Prophetic examples don’t disqualify one either. The fact that an applicant walked away from an application, for whatever reason, including the possibility that the underlying science never actually worked out, doesn’t stop that application from being used to anticipate claims in a later-granted patent.5
Agilent asked the Supreme Court to revisit this. At oral argument before the Federal Circuit, Professor Mark Lemley, arguing for Agilent, put the problem plainly: a reference that “threw everything at the wall” without teaching which of the “quadrillion quadrillion possibilities” would actually function shouldn’t be able to satisfy enablement.3 The Court of Appeals disagreed. The Supreme Court declined to weigh in.
Their broader argument was that the framework the Federal Circuit relies on, particularly the presumption of enablement for prior art established in Rasmusson v. SmithKline Beecham, has drifted too far from the foundational principle that prior art should reflect genuine, usable knowledge.3
That refusal doesn’t mean Agilent is wrong on the merits. It means the law is what it is, at least until someone else brings a compelling enough case to force the issue.
What This Means If You Hold Patents
The ruling doesn’t change the law. It confirms that the law is settled in a way that creates real risk for patent holders who aren’t doing thorough prior art work before they file.
A few things worth taking seriously:
Your granted patent is only as strong as your pre-filing prior art search. If an abandoned application or prophetic disclosure anticipated your claims and you didn’t find it, you may not know your IP is vulnerable until you’re already in an IPR proceeding, well after the investment has been made and the portfolio has been built around those claims.
The burden is on you, not the challenger. The presumption that prior art is enabling means the other side doesn’t have to prove the prior art actually works. You have to prove it doesn’t.2 In practice, that’s a difficult and expensive argument to win, as Agilent learned across multiple proceedings and multiple years.5
Provisional filing strategy matters more than many teams realize. The 12-month provisional window is where your enablement foundation gets locked in. You can’t add independent claim language in your non-provisional filing. You can refine dependent claims, but the core scope is set. What you include at the provisional stage shapes what’s defensible later, so treating a provisional as a placeholder is a risk most teams don’t fully appreciate until it’s too late.
Abandoned and non-peer-reviewed disclosures are live ammunition. Patent applications publish automatically 18 months after filing, regardless of whether they’re ever granted or even pursued.3 Preprint servers host unreviewed science. These sources don’t disappear when an applicant moves on. They stay in the prior art record, available to anyone who wants to use them.
The Bottom Line
The Agilent case is an argument for searching more thoroughly before you file.
Prior art that shows up in an IPR isn’t always prior art that a standard patentability search would have caught. Abandoned applications, foreign filings, provisional applications that published but never issued, prophetic disclosures in one field that turn out to be relevant in a completely different one five years down the road: this is the landscape patent holders are actually operating in.
Understanding what’s out there before you file changes the decisions you make: which claims you pursue, how you scope them, what you build into your enablement disclosure, and how you structure a portfolio around what’s genuinely defensible rather than just what got granted.
The Supreme Court had a chance to weigh in on whether abandoned, prophetic prior art should carry full anticipatory weight against patents that met a higher standard to exist. It passed. Until that changes, this is the environment.
The flaw this ruling exposed has been there for a while. There’s just no longer any expectation it will be corrected anytime soon.
InnovationQ+ from IP.com gives patent teams access to comprehensive prior art search across patents, published applications, non-patent literature, and defensive publications, including the kinds of sources that don’t always surface in standard searches. If you’re building IP in competitive technical fields, understanding what’s already out there is the first step to building a portfolio that holds up. Request a demo to see how InnovationQ+ can help.
