Enabling Patent Law's Inherent Anticipation Doctrine

65 Pages Posted: 30 Jun 2008 Last revised: 16 Jan 2009

Date Written: July 1, 2008


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 Classification: K20, K29

Suggested Citation

Mueller, Janice M. and Chisum, Donald, Enabling Patent Law's Inherent Anticipation Doctrine (July 1, 2008). Houston Law Review, Vol. 45, No. 4, 2008, U. of Pittsburgh Legal Studies Research Paper No. 2008-19, Available at SSRN: https://ssrn.com/abstract=1153493

Janice M. Mueller (Contact Author)

Chisum Patent Academy ( email )

951 Delong Road
Lexington, KY 40515
United States
8553244786 x2 (Phone)

HOME PAGE: http://www.muelleronpatentlaw.com

Donald Chisum

Independent ( email )

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