What is the relationship between inherency and obviousness in patent law?
What is the relationship between inherency and obviousness in patent law?
The relationship between inherency and obviousness in patent law is complex and often intertwined. While inherency deals with properties or functions that are necessarily present but not explicitly stated, obviousness relates to whether the claimed invention would have been obvious to a person of ordinary skill in the art.
According to MPEP 2112:
“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.”
This means that while a property might be present in the prior art, it doesn’t automatically make the invention obvious. However, if the inherent property is discovered and claimed, it may still be considered obvious if it would have been apparent to a person of ordinary skill in the art.
The MPEP further states:
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
This guidance emphasizes that examiners must provide a solid rationale when using inherency in combination with obviousness arguments.
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