Inherency is a puzzle that runs throughout patent law. Patents are basedupon descriptions of technology. However, technologies may have qualitiesthat are unappreciated or unidentified in a patent description, but whichare nonetheless present. The law refers to these unknown attributes asinherent in the product or process. What should be done about suchcharacteristics or qualities of a technology that exist but are notexplicitly described, either through ignorance or inadvertence? Thisproblem is explicitly presented in at least five different patentdoctrines: anticipation, the on-sale bar, priority disputes,double-patenting, and enablement; and it casts its shadow across the lawgoverning subject matter, infringement, and obviousness.Inherency is also perhaps the most elusive doctrine in all of patent law.The cases appear to flatly contradict each other, are often accompanied bydissents, and in the last three years alone have triggered one abortive enbanc rehearing and strong calls for a second. In particular, the courtshave split sharply over whether an element can be inherent in a prior artreference even if people of ordinary skill in the art do not appreciate theexistence of that element.In this Article, we argue that this confusion is largely unnecessary. Whilemany courts have recited as gospel the idea that inherency requiresknowledge or appreciation of the inherent element, in no case does theapplication of the inherency doctrine actually turn on knowledge of theelement. Rather, the inherency cases are all ultimately about whether thepublic already gets the benefit of the claimed element or invention. If thepublic already benefits from the invention, even if they don't know why,the invention is inherent in the prior art. If the public doesn't benefitfrom the invention, there is no inherency.In Part I, we examine the main thread of inherency cases, those arising outof the novelty and statutory bar provisions of the Patent Act. We explainhow the courts got off track in their focus on knowledge, and why a focuson benefit clearly and consistently explains the doctrine. In Part II, weconsider inherency in a different context, one in which the inventor mustshow possession of the claimed invention, either to prevent a new matterrejection or to establish priority of invention. Finally, in Part III, wediscuss the broader implications of this rule, including what the inherencydoctrine may mean for patents on DNA sequences and patents on drugs derivedfrom traditional knowledge. A proper understanding of the inherencydoctrine may offer a logical explanation for the product of nature cases,undermining the last significant exception to patentable subject matter.
Inherency