Inherency Doctrine in Patent Prosecution and Litigation

This CLE course will guide patent counsel on the inherency doctrine in patent prosecution and litigation. The panel will examine how the courts and the USPTO have treated and are treating the issue. The panel will also discuss what it takes to prove anticipation by inherency and offer best practices for overcoming rejections based on inherency.

While inherent anticipation is well recognized and generally well understood, the same cannot be said for inherency in obviousness. Inherent obviousness continues to cause problems for courts, at the USPTO with patent examiners, and for patent applicants.

There has been a growing number of reversals by the federal courts for improper inherent obviousness findings. Those cases demonstrate the disconnect between the Federal Circuit's position regarding the inherency doctrine in obviousness and misapplication of the USPTO and lower courts' doctrine.

Patent counsel should understand the positions of the Federal Circuit and the USPTO to correctly apply the inherency doctrine in anticipation and obviousness contexts when prosecuting patents and litigating them.

Listen as our authoritative panel of patent attorneys examines the inherency doctrine in patent prosecution and litigation from both anticipation and obviousness perspectives. The panel will discuss how the courts and the USPTO have treated and are treating the issues. The panel will also discuss what it takes to prove anticipation by inherency versus in an obviousness context and offer best practices for overcoming rejections based on inherency.