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The Inherency Doctrine

Posted Sunday, February 10, 2013 by Mike Cicero

A very basic premise regarding the issuance of patents is that an invention needs to be novel in order for a patent to be granted. Essentially, what this requirement aims to ensure is that patents are only granted for novel (new) inventions. An invention lacks novelty, and is therefore anticipated by a prior art reference, “only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of the claimed invention.” RCA Corp. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). This standard is fairly easy to comprehend with regard to a single prior art reference expressly disclosing the elements of a claimed invention, but gets a bit trickier when one or more elements are only inherently present in the reference.

For example, suppose that a first inventor invents and is granted a patent for a new and useful sunblock composition. Later, a second inventor invents the same sunblock composition and attempts to patent it. Presumably, the patent awarded to the first inventor teaches each and every element of the sunblock that the second inventor is now claiming and, therefore, it’s quite clear that the invention as claimed lacks novelty and the second inventor will not be awarded a patent.

Suppose instead that the second inventor discovers that the sunblock composition also has incredible skin moisturizing properties when rubbed onto the skin, and that the first inventor did not teach, or even know of, this property. Based on the inherency doctrine something, e.g. a feature or element of an invention, which already exist in the prior art cannot be novel regardless of whether that thing’s presence was expressly stated, known, or even whether it would have been recognizable. Schering Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373 (Fed. Cir.2003). Applying the inherency doctrine to the current hypothetical, the second inventor will still not be entitled to a patent because in order to use the sunblock composition as sunblock, which necessarily requires it to be rubbed on the skin, the “incredible skin moisturizing properties” would inherently have to take place.

Finally, suppose that the second inventor instead discovers that the sunblock composition can be sprayed onto any exterior or interior car surface with the result that the surface immediately looks brand new and the effect lasts indefinitely. Under this hypothetical, the second inventor will likely be able to obtain a patent directed toward a method of using the already known sunblock composition as an auto surface renewal composition. This is true because, even though a person could possibly apply the sunblock to their skin inside a car in which case the composition may inherently renew some car surfaces, that result would not inherently flow from all uses of the composition as a sunblock.

It is worth noting that even if the second inventor receives a patent for the method of using the composition as an auto surface renewal product that does not mean the she will necessarily be able to use that method. Remember, the first inventor may still have a patent directed toward the composition itself unrestricted by any specific use. If that were the case then the second inventor may have to seek a license from the first inventor, if he still has a valid and enforceable patent, to use the composition.

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