Bitlaw

35 U.S.C. 103, Conditions for patentability; non-obvious subject matter

Executive summary:

Potential for Errors: This document contains one section of the U.S. Patent Act (found in Title 35 of the United States Code) as amended by the Leahy-Smith America Invents Act. This page was last updated in November 2011. While the page has been edited to help ensure that the changes made by the AIA to this section are reflected in this document, errors are possible. If you notice such errors, please contact Dan Tysver at (dtysver@bitlaw.com).

Alternate Views: This page uses stylesheets to allow different views of this statutory section. By clicking on the buttons below, one can view this section in a redline version reflecting the changes made by the AIA, a clean version showing the section after the AIA, or an original version showing the original section before the AIA. There is an index page and an all-sections page for this version of 35 USC.

Effective Date: Various sections of the AIA are implemented using different effective dates. If changes have been made to this section of the Patent Act, the effective date(s) for those changes are found in the implementing section of the AIA, and are reproduced below for your convenience.

 

Redline Clean Version (after America Invents Act) Original (before AIA)

 

Previous Section (§102) | Next Section (§104)

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

(a) A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the claimed invention subject matter sought to be patented and the prior art are such that the claimed invention subject matter as a whole would have been obvious before the effective filing date of the claimed invention at the time the invention was made to a person having ordinary skill in the art to which the claimed invention said subject matter pertains. Patentability shall not be negatived negated by the manner in which the invention was made.

(b)

(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-

(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and

(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

(2) A patent issued on a process under paragraph (1)-

(A) shall also contain the claims to the composition of matter used in or made by that process, or

(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.

(3) For purposes of paragraph (1), the term "biotechnological process" means-

(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-

(i) express an exogenous nucleotide sequence,

(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or

(iii) express a specific physiological characteristic not naturally associated with said organism;

(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

(c)

(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -

(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

Effective Dates for Changes Made to this Section

IMPLEMENTATION OF FIRST TO FILE
Section 3 of the America Invents Act

EFFECTIVE DATE.--

(1) IN GENERAL.--Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18–month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time--

(A) a claim to a claimed invention that has an effective filing date as defined in Section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or

(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

(2) INTERFERING PATENTS.--The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on the day before the effective date set forth in paragraph (1) of this subsection, shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time--

(A) a claim to an invention having an effective filing date as defined in Section 100(i) of title 35, United States Code, that occurs before the effective date set forth in paragraph (1) of this subsection; or

(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

REMOVAL OF "OF THIS TITLE"
Section 20 of the America Invents Act

(l) EFFECTIVE DATE.--The amendments made by this section shall take effect upon the expiration of the 1 year period beginning on the date of the enactment of this Act and shall apply to proceedings commenced on or after that effective date.