This Note examines the doctrine of inherency in patent law, which relates to the Patent Act’s novelty requirement, and—theoretically— seeks to ensure that inventions that are already within the public domain are not wrenched away from the public through a later patent grant. Unfortunately, a lack of recent Supreme Court guidance and a conflict within the Federal Circuit concerning what is necessary to prove inherency have led to a confusing and unpredictable body of inherency law. This Note begins by outlining the increased concern for uniformity and predictability in patent law; it then traces the early treatment of inherent anticipation by the Supreme Court, as well as the Federal Circuit and its predecessor court. Next, it argues that the Federal Circuit’s more recent inherency jurisprudence has expanded the scope of inherency, particularly with respect to patents covering pharmaceuticals, introducing dangerous and costly unpredictability into the patent system. Finally, it proposes a common-sense solution aimed at abrogating the current boundless conception of inherency in order to allow patent law and inherency to perform their central functions: to provide predictability and ensure the important patent policy of rewarding new inventions that are not already within the public domain.
The Federal Circuit's Unbounded Conception Of Inherency In Patent Law,
47 Loy. L.A. L. Rev. 345
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