Can the written description requirement be satisfied by inherent disclosure?
Yes, the written description requirement can potentially be satisfied by inherent disclosure, but this approach has limitations and requires careful consideration. The MPEP 2163.01 provides guidance on this matter:
“To establish inherency, the 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. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.'”
This means that while inherent properties or characteristics of an invention can contribute to satisfying the written description requirement, they must be necessarily present and recognizable to those skilled in the art based on the original disclosure. Applicants should be cautious about relying solely on inherency and should strive to provide explicit description whenever possible.
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