Can inherent characteristics be used to distinguish over prior art?
Can inherent characteristics be used to distinguish over prior art?
Inherent characteristics can potentially be used to distinguish over prior art, but this approach requires careful consideration and clear evidence. The MPEP 2163.07(a) provides guidance on inherent characteristics:
“By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it.”
When using inherent characteristics to distinguish over prior art:
- The inherent characteristic must be necessarily present in the claimed invention but not in the prior art.
- There must be clear evidence that the characteristic is inherent and not just possibly present.
- The inherent characteristic should be recognized by persons of ordinary skill in the art.
It’s important to note that merely discovering a previously unrecognized property of a prior art composition does not render the old composition patentably new. However, if the claimed invention possesses an inherent characteristic that is not present in the prior art, it may be used as a basis for patentability. Applicants should provide clear support and evidence for any asserted inherent characteristics when attempting to distinguish over prior art.
To learn more: