What are the requirements for applying pre-AIA 35 U.S.C. 103(b)?

This page is an FAQ based on guidance 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.

There are several key requirements for applying pre-AIA 35 U.S.C. 103(b):

• The biotechnological process and composition of matter must be in the same application or separate applications with the same effective filing date.
• Both must be owned or assigned to the same person when the process was invented.
• The patent issued on the process must include claims to the composition of matter, or if in different patents, they must expire on the same date.
• The biotechnological process must meet the definition in pre-AIA 35 U.S.C. 103(b).
• A timely election to proceed under pre-AIA 35 U.S.C. 103(b) must be made.

As stated in the MPEP: An election to proceed under pre-AIA 35 U.S.C. 103(b) shall be made by way of petition under 37 CFR 1.182. The petition must establish that all the requirements set forth in pre-AIA 35 U.S.C. 103(b) have been satisfied.