Enabling Patent Law's Inherent Anticipation Doctrine

Abstract:     
Long a doctrinal and policy morass, the concept of anticipation by inherency can be justly termed the metaphysics of patent law. The Federal Circuit has tended to apply inherency as a per se tool to short-circuit perceived patent ever-greening, especially in the pharmaceutical industry. By wielding inherency too broadly, the court avoids the difficulties of a multi-factored nonobviousness analysis. We argue that the anticipation by inherency doctrine should be cabined. Narrowing reliance on inherency principles would promote important policy goals as well as conform U.S. patent law to the treatment of inherency in foreign regimes. Patent claims (or limitations thereof) should be held anticipated under principles of inherency only when the inherency is truly inevitable. Inevitability is inextricably bound up with the quality of the prior art's teaching. To establish that one practicing the prior art would inevitably have produced a claimed invention, the prior art must satisfy a heightened level of enablement. Despite the silence of the prior art as to the later-claimed invention (or limitation thereof), focus on enablement is the key to inherency. Whatever teaching was explicitly provided in documentary prior art, be it instructions, examples, or other guidance, such teaching must be so clear that when replicated, no more than de minimis experimentation is required to obtain the claimed invention; i.e., to put the public in possession of that invention. Enablement doctrine should be fine-tuned when used in a patent-defeating manner, just as the Federal Circuit has required a heightened degree of enablement for certain patent-obtaining disclosures.

Keywords: patents, novelty, inherency, anticipation, obviousness, pharmaceutical, ever-greening, Federal Circuit

JEL Classifications: K20, K29

Accepted Paper Series