35 U.S.C. § 102 | Conditions for patentability; novelty

(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.

(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.

July 19, 1952, ch. 950 66 Stat. 797 Pub. L. 92–358, § 2July 28, 197286 Stat. 502 Pub. L. 94–131, § 5Nov. 14, 197589 Stat. 691 Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4505, 4806]Nov. 29, 1999113 Stat. 1536 Pub. L. 107–273, div. C, title III, § 13205(1)Nov. 2, 2002116 Stat. 1902 Pub. L. 112–29, § 3(b)(1)Sept. 16, 2011125 Stat. 285 Pub. L. 112–211, title I, § 102(2)Dec. 18, 2012126 Stat. 1531(, ; , , ; , , ; , , , 1501A–565, 1501A–590; , , ; , , ; , , .)

Historical and Revision Notes

Mar. 3, 1897, ch. 391, § 1 29 Stat. 692 May 23, 1930, ch. 312, § 1 46 Stat. 376 Aug. 5, 1939, ch. 450, § 1 53 Stat. 1212Paragraphs (a), (b), and (c) are based on Title 35, U.S.C., 1946 ed., § 31 (R.S. 4886, amended (1) , , (2) , , (3) , ).

No change is made in these paragraphs other than that due to division into lettered paragraphs. The interpretation by the courts of paragraph (a) as being more restricted than the actual language would suggest (for example, “known” has been held to mean “publicly known”) is recognized but no change in the language is made at this time. Paragraph (a) together with section 104 contains the substance of Title 35, U.S.C., 1946 ed., § 72 (R.S. 4923).

Mar. 3, 1897, ch. 391, § 3 29 Stat. 692 Mar. 3, 1903, ch. 1019, § 1 32 Stat. 1225 June 19, 1936, ch. 594 49 Stat. 1529Paragraph (d) is based on Title 35, U.S.C., 1946 ed., § 32, first paragraph (R.S. 4887 (first paragraph), amended (1) , , 693, (2) , , 1226, (3) , ).

The section has been changed so that the prior foreign patent is not a bar unless it was granted before the filing of the application in the United States.

MilburnDavis-BournonvilleParagraph (e) is new and enacts the rule of v. , 270 U.S. 390, by reason of which a United States patent disclosing an invention dates from the date of filing the application for the purpose of anticipating a subsequent inventor.

Paragraph (f) indicates the necessity for the inventor as the party applying for patent. Subsequent sections permit certain persons to apply in place of the inventor under special circumstances.

Mar. 3, 1897, ch. 391, § 2 29 Stat. 692 Aug. 5, 1939, ch. 450, § 1 53 Stat. 1212Paragraph (g) is derived from Title 35, U.S.C., 1946 ed., § 69 (R.S. 4920, amended (1) , , (2) , ), the second defense recited in this section. This paragraph retains the present rules of law governing the determination of priority of invention.

Language relating specifically to designs is omitted for inclusion in subsequent sections.

Editorial Notes

Amendments

Pub. L. 112–2112012—Subsec. (d)(2). substituted “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)” for “to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c)”.

Pub. L. 112–292011— amended section generally. Prior to amendment, section related to conditions for patentability; novelty and loss of right to patent.

Pub. L. 107–273 Pub. L. 106–113, § 1000(a)(9) [title IV, § 4505]Pub. L. 107–273 Pub. L. 106–113, § 1000(a)(9) [title IV, § 4505]2002—Subsec. (e). , amended . See 1999 Amendment note below. Prior to being amended by , , had amended subsec. (e) to read as follows: “The invention was described in—

“(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or

“(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or”.

Pub. L. 106–113, § 1000(a)(9) [title IV, § 4505]Pub. L. 107–273 section 371(c) of this title1999—Subsec. (e). , as amended by , amended subsec. (e) generally. Prior to amendment, subsec. (e) read as follows: “the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of before the invention thereof by the applicant for patent, or”.

Pub. L. 106–113, § 1000(a)(9) [title IV, § 4806]Subsec. (g). , amended subsec. (g) generally. Prior to amendment, subsec. (g) read as follows: “before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

Pub. L. 94–131 section 371(c) of this title1975—Par. (e). inserted provision for nonentitlement to a patent where the invention was described in a patent granted on an international application by another who has fulfilled the requirements of pars. (1), (2), and (4) of before the invention thereof by the applicant for patent.

Pub. L. 92–3581972—Subsec. (d). inserted reference to inventions that were the subject of an inventors’ certificate.

Statutory Notes and Related Subsidiaries

Effective Date of 2012 Amendment

Pub. L. 112–211Dec. 18, 2012May 13, 2015section 103 of Pub. L. 112–211 section 100 of this titleAmendment by effective on the later of the date that is 1 year after , or the date that the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs enters into force with respect to the United States (), and applicable only to certain applications filed on and after that effective date and patents issuing thereon, with certain exceptions, see , set out as a note under .

Effective Date of 2011 Amendment

Pub. L. 112–29Sept. 16, 2011section 3(n) of Pub. L. 112–29 section 100 of this titleAmendment by effective upon the expiration of the 18-month period beginning on , and applicable to certain applications for patent and any patents issuing thereon, see , set out as an Effective Date of 2011 Amendment; Savings Provisions note under .

Effective Date of 1999 Amendment

Pub. L. 106–113Nov. 29, 2000Nov. 29, 2000Pub. L. 106–113 section 10 of this titleAmendment by section 1000(a)(9) [title IV, § 4505] of effective and applicable to all patents and all applications for patents pending on or filed after , see section 1000(a)(9) [title IV, § 4508] of , as amended, set out as a note under .

Effective Date of 1975 Amendment

Pub. L. 94–131Jan. 24, 1978section 11 of Pub. L. 94–131 section 351 of this titleAmendment by effective , and applicable on and after that date to patent applications filed in the United States and to international applications, where applicable, see , set out as an Effective Date note under .

Effective Date of 1972 Amendment

Pub. L. 92–358, § 3(b)July 28, 197286 Stat. 502

March 20, 1883July 14, 1967Aug. 25, 1973“Section 2 of this Act [amending this section] shall take effect six months from the date when Articles 1 to 12 of the Paris Convention of , for the Protection of Industrial Property, as revised at Stockholm, , come into force with respect to the United States [] and shall apply to applications thereafter filed in the United States.”

, , , provided that:

Savings Provisions

Sept. 16, 2011section 3 of Pub. L. 112–29 section 3(n)(2) of Pub. L. 112–29 section 100 of this titleProvisions of former subsec. (g) of this section, as in effect on the day before the expiration of the 18-month period beginning on , apply to each claim of certain applications for patent, and certain patents issued thereon, for which the amendments made by also apply, see , set out as an Effective Date of 2011 Amendment; Savings Provisions note under .

Continuity of Intent Under the CREATE Act

Pub. L. 112–29, § 3(b)(2)Sept. 16, 2011125 Stat. 287

section 102(c) of title 35 Public Law 108–453 section 1 of this title section 103 of this title section 102(c) of title 35“The enactment of , United States Code, under paragraph (1) of this subsection is done with the same intent to promote joint research activities that was expressed, including in the legislative history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (; the ‘CREATE Act’) [see Short Title of 2004 Amendment note set out under ], the amendments of which are stricken by subsection (c) of this section [amending ]. The United States Patent and Trademark Office shall administer , United States Code, in a manner consistent with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent and Trademark Office.”

, , , provided that:

Tax Strategies Deemed Within the Prior Art

Pub. L. 112–29, § 14Sept. 16, 2011125 Stat. 327

“(a)

In General .—

For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.

“(b)

Definition .—

For purposes of this section, the term ‘tax liability’ refers to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability.

“(c)

Exclusions .—

This section does not apply to that part of an invention that—

“(1)

is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or

“(2)

is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.

“(d)

Rule of Construction .—

Nothing in this section shall be construed to imply that other business methods are patentable or that other business method patents are valid.

“(e)

Effective Date; Applicability .—

Sept. 16, 2011This section shall take effect on the date of the enactment of this Act [] and shall apply to any patent application that is pending on, or filed on or after, that date, and to any patent that is issued on or after that date.”

, , , provided that:

Emergency Relief From Postal Situation Affecting Patent Cases

Mar. 18, 1970Mar. 30, 1970section 1(a) of Pub. L. 92–34 section 111 of this titleRelief as to filing date of patent application or patent affected by postal situation beginning on , and ending on or about , but patents issued with earlier filing dates not effective as prior art under subsec. (e) of this section as of such earlier filing dates, see , formerly set out in a note under .