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Doctrine of inherency

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Title: Doctrine of inherency  
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Subject: United States patent law
Collection: Legal Doctrines and Principles, United States Patent Law
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Doctrine of inherency

In United States patent law, for a patent claim to be valid, its subject matter must be novel and non-obvious. The claim is anticipated (i.e. will fail because its subject matter is not novel) if a single prior art reference, either expressly or inherently, discloses every feature of the claimed invention. The concept of inherency is predicated on the idea that a claim should not pass the test of anticipation merely because a feature of it is undisclosed or unrecognized in the prior art reference. A prior art source may thus still anticipate if an apparently missing element of the claim is inherent in that prior art source.

Procedurally, to rely on the doctrine of inherency, one must provide a basis in fact and/or technical reasoning supporting a determination that an allegedly inherent characteristic necessarily would be present if the teachings of the prior art were followed, even if the inherent feature would not have been recognized.

The fact that a certain result or characteristic may occur or be present in the prior art is not alone sufficient to establish inherency of that result or characteristic. To establish inherency, the evidence must make clear that the missing matter is necessarily present in the prior art reference. Inherency may not be established by probabilities or possibilities.

Once the United States Patent and Trademark Office (USPTO) establishes that a product referenced in prior art appears to be substantially identical, the burden shifts to the applicant to show a non-obvious difference.

The doctrine of inherency is typically invoked when an inventor tries to obtain a product patent for a product that had been unintentionally invented earlier ("accidental anticipation").

The United States Supreme Court held in Tilghman v. Proctor that where the first, accidental producer was not aware of the product and did not attempt to produce it, the first production did not bar a patent on the subsequent "invention" of the product. 102 U.S. 707 (1880).

Recent case law holds that an inventor cannot obtain a product patent simply by putting the product to new use, even if the new use had not been previously contemplated. However, a recent Federal Circuit trend is to examine whether the previous invention actually benefited the public. If the public does not benefit from the previous product, then there is no inherency.

References

  • Merges/Menell/Lemley, Intellectual Property in the Technology Age, Aspen Publishers 2006
  • Nicholas v. Medicis, The Federal Court has dealt with anticipation and anticipation base on inherency for patents.


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