How does inherency apply to method claims in patent applications?

How does inherency apply to method claims in patent applications?

Inherency can apply to method claims in patent applications, but its application requires careful consideration. According to MPEP 2163.07(a):

“The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic.”

For method claims:

• Inherency can apply if the claimed method necessarily results in a particular outcome or effect.
• The inherent result must be the natural result flowing from the operation as taught in the prior art or original disclosure.
• Examiners should be cautious about assuming inherency in method claims without clear evidence.

It’s important to note that for method claims, the focus is often on the steps of the method rather than the result. However, if a claimed result is inherently achieved by following the disclosed steps, it may be considered inherent to the method. Patent applicants should provide clear support for any inherent characteristics in method claims to satisfy the written description requirement.

To learn more:

• inherency
• method claims
• patent application
• MPEP 2163.07(a)