35 U.S.C. § 100 — Definitions

Page 40 TITLE 35—PATENTS § 100 1 So in original. Does not conform to chapter heading. Chap. Sec. 11. Application for Patent ....................... 111 12. Examination of Application ............. 131 13. Review of Patent and Trademark Office Decisions ............................... 141 14. Issue of Patent ..................................... 151 15. Plant Patents ........................................ 161 16. Designs ................................................... 171 17. Secrecy of Certain Inventions and Filing Applications Abroad 1 ......... 181 18. Patent Rights in Inventions Made with Federal Assistance ................. 200 Editorial Notes AMENDMENTS 2002—Pub. L. 107–273, div. C, title III, § 13206(a)(6), Nov. 2, 2002, 116 Stat. 1904, substituted ‘‘Examination of Ap- plication’’ for ‘‘Examination of Applications’’ in head- ing of chapter 12. 1982—Pub. L. 97–256, title I, § 101(6), Sept. 8, 1982, 96 Stat. 816, added item for chapter 18. 1975—Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949, sub- stituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’ in heading of chapter 13. CHAPTER 10—PATENTABILITY OF INVENTIONS Sec. 100. Definitions. 101. Inventions patentable. 102. Conditions for patentability; novelty. 103. Conditions for patentability; non-obvious subject matter. [104. Repealed.] 105. Inventions in outer space. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 3(b)(3), (d), Sept. 16, 2011, 125 Stat. 287, substituted in item 102 ‘‘Conditions for pat- entability; novelty’’ for ‘‘Conditions for patentability; novelty and loss of right to patent’’ and struck out item 104 ‘‘Invention made abroad’’. 1990—Pub. L. 101–580, § 1(b), Nov. 15, 1990, 104 Stat. 2863, added item 105. § 100. Definitions When used in this title unless the context oth- erwise indicates— (a) The term ‘‘invention’’ means invention or discovery. (b) The term ‘‘process’’ means process, art or method, and includes a new use of a known proc- ess, machine, manufacture, composition of mat- ter, or material. (c) The terms ‘‘United States’’ and ‘‘this coun- try’’ mean the United States of America, its ter- ritories and possessions. (d) The word ‘‘patentee’’ includes not only the patentee to whom the patent was issued but also the successors in title to the patentee. (e) The term ‘‘third-party requester’’ means a person requesting ex parte reexamination under section 302 who is not the patent owner. (f) The term ‘‘inventor’’ means the individual or, if a joint invention, the individuals collec- tively who invented or discovered the subject matter of the invention. (g) The terms ‘‘joint inventor’’ and ‘‘co- inventor’’ mean any 1 of the individuals who in- vented or discovered the subject matter of a joint invention. (h) The term ‘‘joint research agreement’’ means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, de- velopmental, or research work in the field of the claimed invention. (i)(1) The term ‘‘effective filing date’’ for a claimed invention in a patent or application for patent means— (A) if subparagraph (B) does not apply, the actual filing date of the patent or the applica- tion for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c). (2) The effective filing date for a claimed in- vention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought. (j) The term ‘‘claimed invention’’ means the subject matter defined by a claim in a patent or an application for a patent. (July 19, 1952, ch. 950, 66 Stat. 797; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4603], Nov. 29, 1999, 113 Stat. 1536, 1501A–567; Pub. L. 112–29, § 3(a), Sept. 16, 2011, 125 Stat. 285; Pub. L. 112–211, title I, § 102(1), Dec. 18, 2012, 126 Stat. 1531.) HISTORICAL AND REVISION NOTES Paragraph (a) is added only to avoid repetition of the phrase ‘‘invention or discovery’’ and its derivatives throughout the revised title. The present statutes use the phrase ‘‘invention or discovery’’ and derivatives. Paragraph (b) is noted under section 101. Paragraphs (c) and (d) are added to avoid the use of long expressions in various parts of the revised title. Editorial Notes AMENDMENTS 2012—Subsec. (i)(1)(B). Pub. L. 112–211 substituted ‘‘right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c)’’ for ‘‘right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c)’’. 2011—Subsec. (e). Pub. L. 112–29, § 3(a)(1), struck out ‘‘or inter partes reexamination under section 311’’ after ‘‘302’’. Subsecs. (f) to (j). Pub. L. 112–29, § 3(a)(2), added sub- secs. (f) to (j). 1999—Subsec. (e). Pub. L. 106–113 added subsec. (e). Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2012 AMENDMENT Pub. L. 112–211, title I, § 103, Dec. 18, 2012, 126 Stat. 1532, provided that: ‘‘(a) IN GENERAL.—The amendments made by this title [enacting part V of this title and amending this section and sections 102, 111, 115, 120, 154, 173, 365, and 366 of this title] shall take effect on the later of— ‘‘(1) the date that is 1 year after the date of the en- actment of this Act [Dec. 18, 2012]; or ‘‘(2) the date of entry into force of the treaty with respect to the United States [May 13, 2015]. Page 41 TITLE 35—PATENTS § 102 ‘‘(b) APPLICABILITY OF AMENDMENTS.— ‘‘(1) IN GENERAL.—Subject to paragraph (2), the amendments made by this title shall apply only to international design applications, international ap- plications, and national applications filed on and after the effective date set forth in subsection (a), and patents issuing thereon. ‘‘(2) EXCEPTION.—Sections 100(i) and 102(d) of title 35, United States Code, as amended by this title, shall not apply to an application, or any patent issuing thereon, unless it is described in section 3(n)(1) of the Leahy-Smith America Invents Act [Pub. L. 112–29] (35 U.S.C. 100 note). ‘‘(c) DEFINITIONS.—For purposes of this section— ‘‘(1) the terms ‘treaty’ and ‘international design ap- plication’ have the meanings given those terms in section 381 of title 35, United States Code, as added by this title; ‘‘(2) the term ‘international application’ has the meaning given that term in section 351(c) of title 35, United States Code; and ‘‘(3) the term ‘national application’ means ‘national application’ within the meaning of chapter 38 of title 35, United States Code, as added by this title.’’ EFFECTIVE DATE OF 2011 AMENDMENT; SAVINGS PROVISIONS Pub. L. 112–29, § 3(n), Sept. 16, 2011, 125 Stat. 293, pro- vided that: ‘‘(1) IN GENERAL.—Except as otherwise provided in this section [amending this section and sections 32, 102, 103, 111, 119, 120, 134, 135, 145, 146, 154, 172, 202, 287, 291, 305, 363, 374, and 375 of this title, repealing sections 104 and 157 of this title, and enacting provisions set out as notes under sections 32, 102, and 111 of this title], 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 [Sept. 16, 2011], 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 ef- fective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effec- tive 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 sec- tions 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 con- tains or contained at any time— ‘‘(A) a claim to an invention having an effective fil- ing 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.’’ EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as a note under section 41 of this title. § 101. Inventions patentable Whoever invents or discovers any new and use- ful process, machine, manufacture, or composi- tion of matter, or any new and useful improve- ment thereof, may obtain a patent therefor, sub- ject to the conditions and requirements of this title. (July 19, 1952, ch. 950, 66 Stat. 797.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 31 (R.S. 4886, amended (1) Mar. 3, 1897, ch. 391, § 1, 29 Stat. 692, (2) May 23, 1930, ch. 312, § 1, 46 Stat. 376, (3) Aug. 5, 1939, ch. 450, § 1, 53 Stat. 1212). The corresponding section of existing statute is split into two sections, section 101 relating to the subject matter for which patents may be obtained, and section 102 defining statutory novelty and stating other condi- tions for patentability. Section 101 follows the wording of the existing stat- ute as to the subject matter for patents, except that reference to plant patents has been omitted for incor- poration in section 301 and the word ‘‘art’’ has been re- placed by ‘‘process’’, which is defined in section 100. The word ‘‘art’’ in the corresponding section of the ex- isting statute has a different meaning than the same word as used in other places in the statute; it has been interpreted by the courts as being practically synony- mous with process or method. ‘‘Process’’ has been used as its meaning is more readily grasped than ‘‘art’’ as interpreted, and the definition in section 100(b) makes it clear that ‘‘process or method’’ is meant. The re- mainder of the definition clarifies the status of proc- esses or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions for patentability are satisfied. Statutory Notes and Related Subsidiaries LIMITATION ON ISSUANCE OF PATENTS Pub. L. 112–29, § 33, Sept. 16, 2011, 125 Stat. 340, pro- vided that: ‘‘(a) LIMITATION.—Notwithstanding any other provi- sion of law, no patent may issue on a claim directed to or encompassing a human organism. ‘‘(b) EFFECTIVE DATE.— ‘‘(1) IN GENERAL.—Subsection (a) shall apply to any application for patent that is pending on, or filed on or after, the date of the enactment of this Act [Sept. 16, 2011]. ‘‘(2) PRIOR APPLICATIONS.—Subsection (a) shall not affect the validity of any patent issued on an applica- tion to which paragraph (1) does not apply.’’ § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, de- scribed in a printed publication, or in public use, on sale, or otherwise available to the pub- lic 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 appli- cation for patent published or deemed pub- lished under section 122(b), in which the patent or application, as the case may be, names an- other inventor and was effectively filed before the effective filing date of the claimed inven- tion. (b) EXCEPTIONS.— (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED IN- VENTION.—A disclosure made 1 year or less be- fore the effective filing date of a claimed in- vention shall not be prior art to the claimed invention under subsection (a)(1) if—