The Inherency Doctrine: A Performance Review

Ryan Pool

The doctrine of inherency is relatively straight forward and there is very little subjectivity in the proper analysis. Nevertheless, both Patent Examiners at the USPTO and many Applicants struggle to conduct a proper analysis under this doctrine.

The USPTO takes the position that “the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.” Whether a property is inherent or not is a question of fact, the fact in question being, does the claimed property inherently occur in the prior art. With regard to defining inherency in the context of patent law, the Federal Circuit held in In re Robertson that, “It is well-settled that inherency cannot be established by mere probabilities or possibilities.” As recent as 2016, the Federal Circuit citing Robertson offered the further definition that, “Inevitability is at the heart of inherency; ’that a certain thing may result from a given set of circumstances is not sufficient.’” 


Everyone at the Journal would like to introduce the new Editor-in-Chief Johnathan Lindsey!


PTAB Practice Tips: Comparing Appealable and Petitionable Matters

James A. Worth

Practitioners considering an appeal to the Board should differentiate petitionable matters from appealable matters as early as possible to ensure that their arguments go to the right decision maker, and because petitionable matters have their own time clock for limitations. In an appeal, the Board is only permitted to consider the merits of an Examiner’s rejection. The Board is not permitted to review an Examiner’s other, procedural actions because the process of examination is within the exclusive purview of the Director, and is delegated by the Director to the Examiner. Thus, an applicant’s petition is reviewed by the Director, rather than the Board.

This article addresses the history of the distinction between appealable and petitionable matters, explains the modern codification of the law, and discusses examples of petitionable matters and other petitions.


Volume 101 Issue 2 is now available!


Here’s a sneak peak into Volume 101 Issue 2

  - PTAB Practice Tips: Comparing Appealable and Petitionable Matters 

The Honorable James A. Worth

             The Inherency Doctrine: A Performance Review 

Ryan Pool

            Patenting an Invention as a Free Black Man in the Nineteenth Century 

Kathleen Wills

               - Computer-Generated Inventions 

       Michael McLaughlin

- Vanda v. West-Ward: Swinging Back the Pendulum for Patenting Natural Phenomena 

Kevin A. Sforza

- I Wrote This, I Swear!: Protecting the "Copyright" of Fanfiction Writers from the Thievery of Other Fanfiction Writers 

Narisa Bandal

- Preambles: Form over Substance 

Roy Y. Yi


Warren D. Woessner and Robin A. Chadwick, Schwegman, Lundberg & Woessner, P.A.

Section 101 of the Patent Act (the Act) states that the following categories of invention are eligible for patent protection, so long as the other standards of patentability are met: processes, machines, manufactures, and compositions of matter, as well as improvements thereof. In 1980, the Supreme Court ruled that a man-made microorganism was also eligible for patent protection under Section 101, reaffirming at the same time that no patents should be granted on laws of nature, physical phenomena and abstract ideas. Instead, the Court emphasized that patent-eligible inventions must be generated by human ingenuity. Apart from its decision in 2001 that plants were also eligible for patenting, the Supreme Court had not again addressed whether living organisms, or their natural components, were patent eligible until 2012.

Although the courts have grappled for years with the “abstractness” of software claims, after about 2010 the courts turned their attention to life sciences patents, finding that many diagnostic claims were patent-ineligible as abstract ideas, while others were patent-ineligible for patenting as embracing natural phenomena. Shortly after the Bilski decision held that claims to a method of hedging commodity risk were patent-ineligible under Section 101 as an attempt to patent an abstract idea, the Supreme Court granted certiorari and remanded the Classen case involving an appeal of claims to immunization schedules, and then decided two biotech/pharma cases, the Mayo case in 2012 and the Myriad case in 2013. The application of the Supreme Court’s Mayo decision by the Federal Circuit to the prenatal testing claims in the PerkinElmer case and in the Ariosa case, as well as the Federal Circuit’s own rejection of the Myriad diagnostic claims suggests that claims directed to the use of biomarkers in personalized medicine have increasingly become vulnerable to attack by litigants as not constituting patent-eligible inventions. The recent Athena case further confirms the court’s stance against the patent eligibility of diagnostic claims. The U.S. Patent and Trademark Office has also issued a series of their own Memoranda outlining the patent eligibility of natural products, natural phenomena, and laws of nature. 


The Rumble About the Jungle: The Fight Over Dot Brand gTLDs and Geographic Names

J. Spencer Sanders II

In January 2012, The Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit responsible for the maintenance and operations of the Internet, created a program designed to increase the number of generic top-level domains (“gTLDs”). The program’s purpose was to address the demand problem associated with gTLDs, increase competition, customer choice, and innovation. The first expansion closed in April 2012 and brought in over 1,900 applications for new gTLDs. The program came with its fair share of problems, with some applicants running into issues when applying for brand specific gTLDs. Specifically, the e-commerce giant Amazon’s application came under fire by countries in the Amazon rainforest region. The clothing company Patagonia and the hotel chain Shangri-La had similar problems with their gTLD applications for Patagonia and Shangri-La. After official opposition from representative members from each of the countries on ICANN’s Governmental Advisory Committee, the applications were put on hold and official processes started to decide whether the gTLD applications would be allowed to proceed. Issues over geographic name gTLDs and property rights in trademarks arose and the parties are still battling it out. The ICANN board needs to make changes in the promised second round of expansion to avoid these problems happening again. 

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