United States patent law Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...

, the doctrine of inherency holds that, under certain circumstances,

prior art Prior art (also known as state of the art or background art) is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria f ...

may be relied upon not only for what it expressly teaches, but also for what is inherent therein, i.e., what necessarily flows from the express teachings. For a

patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...

claim to be valid, its subject-matter must be

novel A novel is a relatively long work of narrative fiction, typically written in prose and published as a book. The present English word for a long work of prose fiction derives from the for "new", "news", or "short story of something new", itsel ...

and non-obvious. The claim is anticipated (i.e. will fail because its subject-matter is not novel) if a single

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 the 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 The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...

(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 An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an ...

tries to obtain a ''product'' patent for a product that had been unintentionally invented earlier ("accidental anticipation"). The

United States Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...

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). The use of the doctrine of inherency in a determination of obviousness is more complicated because " at which may be inherent is not necessarily known and that which is unknown cannot be obvious." A patent applicant may use the doctrine of inherency to respond to a rejection for lack of an adequate written description by showing that the

patent application A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and re ...

inherently includes the disclosure that is allegedly lacking.MPEP § 2163
/ref>

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. Legal doctrines and principles United States patent law {{law-term-stub