Doctrine of inherency
Encyclopedia
In United States patent law
, for a patent
claim
to be valid, it must claim a subject matter that is novel
and non-obvious
. A claim is anticipated if a single prior art
reference, either expressly or inherently, discloses every feature of a claimed invention. Inherency is predicated on the idea that anticipation should not be avoided merely because a claimed feature is undisclosed or unrecognized in the prior art reference. A prior art source may 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 of characteristic may occur or be present in the prior art is not sufficient to establish inherency of that result or characteristic. To establish inherency, the evidence must make clear that the missing descriptive 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 reference teaching product appears to be substantially identical, the burden shifts to the applicant to show an unobvious difference.
The doctrine of inherency revolves around the question of novelty and arises 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.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, for a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
to be valid, it must claim a subject matter that is novel
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
and non-obvious
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
. A claim is anticipated if a single prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
reference, either expressly or inherently, discloses every feature of a claimed invention. Inherency is predicated on the idea that anticipation should not be avoided merely because a claimed feature is undisclosed or unrecognized in the prior art reference. A prior art source may 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 of characteristic may occur or be present in the prior art is not sufficient to establish inherency of that result or characteristic. To establish inherency, the evidence must make clear that the missing descriptive 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
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) establishes that a reference teaching product appears to be substantially identical, the burden shifts to the applicant to show an unobvious difference.
The doctrine of inherency revolves around the question of novelty and arises when an inventor
Inventor (patent)
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention and its case law, no explicit, accurate definition of who exactly is an...
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.