Title 35 of the United States Code
Encyclopedia
Title 35 of the United States Code is a title of United States Code
regarding patent law
. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections (149 of which are used), in Title 35.
Federally recognized forms of intellectual property
are scattered throughout the United States Code. Copyright
s are covered under Title 17
. Trademark
and unfair competition
law is defined in Chapter 22 of Title 15 (- [The Lanham Act
]). Trade Secrets law, another form of intellectual property, is defined in .
Title 35 has four parts:
This may seem expansive, but certain subject matter are not eligible, what are called 101 judicial exceptions. The Supreme Court of the United States
recently interpreted 35 USC 101 in a decision Bilski v. Kappos
. The below is a quotation from the Manual of Patent Examining Procedure
(MPEP) (Taken from 8th Ed. Revision 6, Sept 2007):
. These conditions generally relate to when an invention is already known publicly. Each subsection of section 102 describes a different kind of prior art
which can be used as evidence that an invention is already public. This includes inventions that have already been described in other patent applications or publications. It also includes inventions that have been on sale for more than a year before a patent application was filed. Netscape Commc'ns Corp. v. Konrad is an example of a case that focuses on the public use and on-sale criteria of this section.
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
Sections 102(a), (b) and (e) are the most important considerations when determining patentable subject matter during patent prosecution.
. This provides that a patentable invention must not have been obvious to a "person having ordinary skill in the art
" in view of the appropriate prior art. The most important judicial decision in interpreting 35 USC 103 is Graham v. John Deere Co.
. And more recently KSR v. Teleflex
in which the Supreme Court of the United States
reaffirmed Graham v. Deere and moved away from reliance on the TSM test.
The most important section of section 103 is 103(a):
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
The full text of this section of the statute can be found at the USPTO http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_103.htm
35 U.S.C. 112 Specification.
United States Code
The Code of Laws of the United States of America is a compilation and codification of the general and permanent federal laws of the United States...
regarding patent law
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections (149 of which are used), in Title 35.
Federally recognized forms of intellectual property
Intellectual property
Intellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
are scattered throughout the United States Code. Copyright
Copyright
Copyright is a legal concept, enacted by most governments, giving the creator of an original work exclusive rights to it, usually for a limited time...
s are covered under Title 17
Title 17 of the United States Code
Title 17 of the United States Code is the title of the United States Code that outlines United States copyright law.—Subject Matter and Scope of Copyright—Copyright Ownership and Transfer—Duration of Copyright—Copyright Notice, Deposit, and Registration—Copyright Infringement and...
. Trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
and unfair competition
Unfair competition
Unfair competition in a sense means that the competitors compete on unequal terms, because favourable or disadvantageous conditions are applied to some competitors but not to others; or that the actions of some competitors actively harm the position of others with respect to their ability to...
law is defined in Chapter 22 of Title 15 (- [The Lanham Act
Lanham Act
The Lanham Act is a piece of legislation that contains the federal statutes of trademark law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.-History:Named for Representative Fritz G...
]). Trade Secrets law, another form of intellectual property, is defined in .
Title 35 has four parts:
- Part I--United States Patent and Trademark OfficeUnited States Patent and Trademark OfficeThe United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
- Part II—Patentability of Inventions and Grant of Patents
- Part III—Patents and Protection of Patent Rights
- Part IV--Patent Cooperation TreatyPatent Cooperation TreatyThe Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
United States Patent and Trademark Office
Sections 1 through 42 establish the United States Patent and Trademark Office (USPTO). The USPTO is responsible for granting and issuing patents and registering trademarks.Patentability
An invention must meet several requirements to be eligible for a patent. The invention must concern patentable subject matter (section 101). The invention must be novel and the application for a patent on the invention must be timely (section 102). The invention must be non-obvious (section 103). Finally, the invention must be sufficiently documented (section 112).Section 101
35 U.S.C. 101 Inventions patentable.- Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
This may seem expansive, but certain subject matter are not eligible, what are called 101 judicial exceptions. The Supreme Court of the United States
Supreme Court of the United States
The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...
recently interpreted 35 USC 101 in a decision Bilski v. Kappos
Bilski v. Kappos
Bilski v. Kappos, 130 S. Ct. 3218, 561 US __, 177 L. Ed. 2d 792 , was a case decided by the Supreme Court of the United States holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue, an...
. The below is a quotation from the Manual of Patent Examining Procedure
Manual of Patent Examining Procedure
The Manual of Patent Examining Procedure is published by the United States Patent and Trademark Office for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates...
(MPEP) (Taken from 8th Ed. Revision 6, Sept 2007):
- 706.03(a) Rejections Under 35 U.S.C. 101 [R-5]
- I. SUBJECT MATTER ELIGIBILITY
- Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits patents to be granted only for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
- The term "process" as defined in 35 U.S.C. 100, means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
- See MPEP § 2105 for **>patent eligibility of living subject matter< and MPEP § 2106 **>for guidelines pertaining to subject matter eligibility in general.<
- Decisions have determined the limits of the statutory classes. Examples of subject matter not patentable under the statute follow:
- A. Printed Matter
- For example, a mere arrangement of printed matter, though seemingly a "manufacture," is rejected as not being within the statutory classes. See In re Miller, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re Jones, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967).
- B. Naturally Occurring Article
- Similarly, a thing occurring in nature, which is substantially unaltered, is not a "manufacture." A shrimp with the head and digestive tract removed is an example. Ex parte Grayson, 51 USPQ 413 (Bd. App. 1941).
- C. Scientific Principle
- A scientific principle, divorced from any tangible structure, can be rejected as not within the statutory classes. O"Reilly v. Morse, 56 U.S. (15 How.) 62 (1854).
- This subject matter is further limited by the Atomic Energy Act explained in MPEP § 706.03(b).
Section 102
, entitled "Conditions for Patentability", describes some of the conditions when a patent should not be granted to an inventor based on the concept of noveltyNovelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
. These conditions generally relate to when an invention is already known publicly. Each subsection of section 102 describes a different kind of prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
which can be used as evidence that an invention is already public. This includes inventions that have already been described in other patent applications or publications. It also includes inventions that have been on sale for more than a year before a patent application was filed. Netscape Commc'ns Corp. v. Konrad is an example of a case that focuses on the public use and on-sale criteria of this section.
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
- (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
- (c) he has abandoned the invention, or
- (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or
- (e) 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 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 an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
- (f) he did not himself invent the subject matter sought to be patented, or
- (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, 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.
Sections 102(a), (b) and (e) are the most important considerations when determining patentable subject matter during patent prosecution.
Section 103
describes the condition of patentability referred to as non-obviousnessInventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
. This provides that a patentable invention must not have been obvious to a "person having ordinary skill in the art
Person having ordinary skill in the art
The person having ordinary skill in the art , the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person is a legal fiction found in many patent laws throughout the world...
" in view of the appropriate prior art. The most important judicial decision in interpreting 35 USC 103 is Graham v. John Deere Co.
Graham v. John Deere Co.
Graham v. John Deere Co., 383 U.S. 1 , was a case in which the United States Supreme Court clarified the nonobviousness requirement in United States patent law, set forth in .-Facts and procedural history:...
. And more recently KSR v. Teleflex
KSR v. Teleflex
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 , is a decision by the Supreme Court of the United States concerning the issue of obviousness as applied to patent claims.-Case history:...
in which the Supreme Court of the United States
Supreme Court of the United States
The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...
reaffirmed Graham v. Deere and moved away from reliance on the TSM test.
The most important section of section 103 is 103(a):
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
- (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The full text of this section of the statute can be found at the USPTO http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_103.htm
Section 112
dictates the form and content of the specification and the form and content of the patent application's claims. The first paragraph introduces 3 legal concepts, the written description requirement, the enablement requirement, and the best mode requirement. The second paragraph limits the ability of claims to be too open-ended or unclear.35 U.S.C. 112 Specification.
- The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
- The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
- A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
- Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
- A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
- An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
External links
- U.S. Code Title 35, via United States Government Printing OfficeUnited States Government Printing OfficeThe United States Government Printing Office is an agency of the legislative branch of the United States federal government. The office prints documents produced by and for the federal government, including the Supreme Court, the Congress, the Executive Office of the President, executive...
- U.S. Code Title 35, via Cornell UniversityCornell UniversityCornell University is an Ivy League university located in Ithaca, New York, United States. It is a private land-grant university, receiving annual funding from the State of New York for certain educational missions...
- U.S. Code Title 35, section 102, via BitLaw
- Title 35 rendered in verse