Can extrinsic evidence be used to support inherency in patent applications?
Can extrinsic evidence be used to support inherency in patent applications?
Yes, extrinsic evidence can be used to support inherency in patent applications, but there are specific guidelines for its use. According to MPEP 2163.07(a):
“Extrinsic evidence may be used to support inherency; however, extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”
This means that while extrinsic evidence can be valuable in establishing inherency, it must meet certain criteria:
- The evidence must clearly show that the undescribed characteristic is necessarily present in the invention as originally disclosed.
- It must demonstrate that a person of ordinary skill in the art would recognize this characteristic as inherent to the invention.
- The evidence should not introduce new matter or expand the scope of the original disclosure.
It’s important to note that the use of extrinsic evidence is not a substitute for a clear and complete disclosure in the original application. Rather, it serves to support and clarify the inherent characteristics that are already present but not explicitly stated in the original disclosure.
When using extrinsic evidence to support inherency, patent applicants and practitioners should carefully consider its relevance and strength to ensure it effectively supports their claims without raising issues of new matter.
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