Categories: Published Articles Date: Feb 10, 2020 Title: The Inherency Doctrine: A Performance Review
The Inherency Doctrine: A Performance Review
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.’”
In the prosecution of a patent application at the USPTO, use of the Inherency Doctrine has essentially two phases:
1. Construction of a Prima Facie case of anticipation or obviousness using the doctrine;
2. Evaluating rebuttal evidence by the applicant under the doctrine.
In the first phase, the Examiner may use inherency to supply a missing claim limitation but bears the burden of providing, for example, “some evidence or scientific reasoning to establish the reasonableness of the Examiner’s belief that the functional limitation is an inherent characteristic of the prior art.” In the second phase, the burden shifts to Applicants to provide proof that the claimed functional limitation is not, in fact, inherent to the claimed structure or composition. Rebuttal evidence has been described by the Federal Circuit as “merely a showing of facts supporting the opposite conclusion.”
101 J. Pat. & Trademark Off. Soc’y 194 (2019)
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