Can newly discovered results of known processes be patented under the doctrine of inherency?
Can newly discovered results of known processes be patented under the doctrine of inherency?
The patentability of newly discovered results of known processes under the doctrine of inherency is a complex issue in patent law. According to MPEP 2112, the mere discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.
The MPEP states:
“The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”
This means that if a process was already known and in use, discovering new results or properties of that process generally doesn’t make it patentable. However, there are exceptions. If the newly discovered result leads to a new use of the known process that is not inherent or obvious, it may be patentable.
The MPEP further clarifies:
“There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.”
This guidance suggests that even if the result was not recognized earlier, it doesn’t necessarily make it patentable if it’s inherent to the known process. However, each case is evaluated on its own merits, considering factors such as unexpected results, new and non-obvious applications, and the specific claims made in the patent application.
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