Once termed the “metaphysics” of patent law, the doctrine of inherent anticipation has befuddled courts and practitioners alike for decades. Inherent anticipation refers to the notion that a previously published reference can disclose each and every limitation of a later–patented invention without expressly delineating those limitations. These (un)disclosed limitations are necessarily present, or inherent, within the previously published reference. When a previously published reference discloses a later–claimed invention expressly or inherently, the patent covering the later–claimed invention is invalid because the invention lacks novelty. Thus, the doctrine of inherent anticipation allows invalidation of a patent in whole or in part upon a showing that a prior reference contained a patentee’s later–disclosed invention, even if the earlier reference did not expressly disclose what the patentee claimed as his invention.
Courts, including the Federal Circuit, have grappled with whether a person having ordinary skill in the relevant art must recognize inherent features in the prior art reference for the doctrine of inherent anticipation to apply. The resulting intracircuit split in Federal Circuit case law fostered two competing schools of thought on this issue. The Federal Circuit eventually held that recognition of inherent features is not required. Commentators, however, have called upon the court to revisit the doctrine due to its potential chilling effects on innovation. This Note suggests that the Federal Circuit should reexamine the doctrine, paying particular attention to considerations of whether or not a person having ordinary skill in the art was capable of identifying inherent features in the asserted prior art reference. Clarification, or even outright reformation, of the inherent anticipation doctrine grows more imperative as our technological capabilities quickly outpace our legal rules.
“Undetected, Unsuspected, and Unknown”: Should We Anticipate Problems for Scientific Innovation Following Schering Corp. v. Geneva Pharmaceuticals?,
82 Fordham L. Rev. 165
Available at: https://ir.lawnet.fordham.edu/flr/vol82/iss1/4