Does inherency require recognition by a person of ordinary skill in the art?
No, inherency does not require recognition by a person of ordinary skill in the art at the relevant time. The MPEP clearly states: “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.”
(MPEP 2112)
This principle has been affirmed in several court decisions, including Schering Corp. v. Geneva Pharm. Inc., which allowed expert testimony with respect to post-critical date clinical trials to show inherency. The key factor is whether the characteristic is necessarily present in the prior art, regardless of whether it was recognized at the time.
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Topics:
MPEP 2100 - Patentability,
MPEP 2112 - Requirements Of Rejection Based On Inherency; Burden Of Proof,
Patent Law,
Patent Procedure