Working Note Draft: Undetected, Unsuspected, and Unknown: Why the Patent Law Doctrine of Inherent Anticipation Needs to be Re-Examined in Light of an Ever-Expanding Base of Scientific Knowledge

Part I of this Note begins by providing the reader with a brief introduction to U.S. patent law. Specifically, it focuses on the statutory provisions regarding novelty and anticipation. It also outlines the evolution of the inherent anticipation doctrine from early Supreme Court jurisprudence. Part II examines the “intra-circuit” split that developed within the Federal Circuit as the court struggled to determine whether PHOSITA recognition of the inherent feature was necessary for a finding of inherent anticipation. The Federal Circuit’s seminal decision in Schering is described, along with predictions for the future of metabolite research in the wake of the controversial rule that PHOSITA recognition is dispensable in an inherent anticipation analysis. Finally, Part III examines proposals for changes to the inherent anticipation doctrine. This Note then argues for a new “capability” standard that would focus on what a PHOSITA was capable of discovering at the time the prior art was published. As science uncovers more about the world in which we live, the only fact that we know with certainty is that we don’t know much. This Note will conclude by arguing that much of the confusion in the inherent anticipation doctrine may be avoided by simply focusing on what an inventor was capable of identifying at the time of the prior art.