35 U.S.C. § 102 — Conditions for patentability; (MPEP Coverage Index) – BlueIron IP
35 U.S.C. § 102 Conditions for patentability;
This page consolidates MPEP guidance interpreting 35 U.S.C. § 102, including 2794 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The Conditions for patentability is a comprehensive guide that delineates the requirements practitioners must meet to secure a patent, distinguishing between applicability under AIA and pre-AIA rules.
What this section covers
- This section covers the conditions necessary for securing a patent under both AIA and pre-AIA rules.
Key obligations
- Practitioners must satisfy conditions such as novelty and non-obviousness to secure a patent.
- Prior art considerations are a key element in determining the patentability of an invention.
Practice notes
- Draft claims carefully to ensure they are not anticipated by prior art, which can affect patentability under both AIA and pre-AIA rules.
- Be aware of the differences in AIA and pre-AIA practice, as they can significantly impact how novelty is assessed.
Official MPEP § 102 — Conditions for patentability;
Source: USPTOLast Modified: 10/30/2024 08:50:22
35 U.S.C. 102 Conditions for patentability; novelty.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 102 (pre‑AIA) for the law otherwise applicable.]
- (a) NOVELTY; PRIOR ART.—A person shall be entitled to
a patent unless—
- (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
- (2) the claimed invention was described in a patent issued under section 151 , or in an application for patent published or deemed published under section 122(b) , in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
- (b) EXCEPTIONS.—
- (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE
EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1
year or less before the effective filing date of a claimed invention
shall not be prior art to the claimed invention under subsection
(a)(1) if—
- (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
- (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
- (2) DISCLOSURES APPEARING IN APPLICATIONS AND
PATENTS.—A disclosure shall not be prior art to a claimed invention
under subsection (a)(2) if—
- (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
- (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
- (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
- (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE
EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1
year or less before the effective filing date of a claimed invention
shall not be prior art to the claimed invention under subsection
(a)(1) if—
- (c) COMMON OWNERSHIP UNDER JOINT RESEARCH
AGREEMENTS.—Subject matter disclosed 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 in applying the provisions of subsection
(b)(2)(C) if—
- (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
- (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
- (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS
PRIOR ART.—For purposes of determining whether a patent or application for
patent is prior art to a claimed invention under subsection (a)(2), such
patent or application shall be considered to have been effectively filed,
with respect to any subject matter described in the patent or application—
- (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
- (2) if the patent or application for patent is entitled to claim a right of priority under section 119 , 365(a) , 365(b) , 386(a) , or 386(b) , or to claim the benefit of an earlier filing date under section 120 , 121 , 365(c) , or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691; subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948 sec. 4505); subsection (g) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806); subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec. 13205, 116 Stat. 1903; amended Sept. 16, 2011, Public Law 112-29, sec. 3(b), 125 Stat. 284, effective March 16, 2013.*; subsection (d)(2) amended Dec. 18, 2012, Public Law 112-211, sec. 102(2) (effective May 13, 2015), 126 Stat. 1531.))
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011) provided that tax strategies are deemed to be within the prior art (see AIA § 14 ).)
*NOTE: The provisions of 35 U.S.C. 102(g) , as in effect on March 15, 2013, shall also apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note) ), if such application or patent contains or contained at any time a claim to a claimed invention to which is not subject to the first inventor to file provisions of the AIA.]
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