35 U.S. Code § 102 - Conditions for patentability; novelty

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.

(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 (A)

the disclosure was made by the joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

the subject matter disclosed had, before such disclosure, been publicly disclosed by the 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—

the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

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—

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;

the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

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—

if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

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.

Paragraphs (a), (b), and (c) are 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).

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).

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

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 Paragraph (e) is new and enacts the rule of Milburn v. Davis-Bournonville, 270 U.S. 390, by reason of which a29 Stat. 692, (2) Aug. 5, 1939, ch. 450, § 1, 53 Stat. 1212), the second defense recited in this section. This paragraph retains the present rules of law governing the determination of priority of Editorial Notes

2012—Subsec. (d)(2). Pub. L. 112–211 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)”.

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to conditions for patentability; novelty and loss of right to patent.

2002—Subsec. (e). Pub. L. 107–273, amended Pub. L. 106–113, § 1000(a)(9) [title IV, § 4505]. See 1999 Amendment note below. Prior to being amended by Pub. L. 107–273, Pub. L. 106–113, § 1000(a)(9) [title IV, § 4505], had amended subsec. (e) to read as follows: “Thesection 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating thePub. L. 106–113, § 1000(a)(9) [title IV, § 4505], as amended by Pub. L. 107–273, amended subsec. (e) generally. Prior to amendment, subsec. (e) read as follows: “thesection 371(c) of this title before thePub. L. 106–113, § 1000(a)(9) [title IV, § 4806], amended subsec. (g) generally. Prior to amendment, subsec. (g) read as follows: “before the applicant’sPub. L. 94–131 inserted provision for nonentitlement to a patent where thesection 371(c) of this title before thePub. L. 92–358 inserted reference to Statutory Notes and Related Subsidiaries

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

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

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

Amendment by Pub. L. 94–131 effective Jan. 24, 1978 , and applicable on and after that date to patent applications filed in thesection 11 of Pub. L. 94–131, set out as an Effective Date note under section 351 of this title.

“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 March 20, 1883 , for the Protection of Industrial Property, as revised at Stockholm, July 14, 1967 , come into force with respect to theAug. 25, 1973 ] and shall apply to applications thereafter filed in the Savings Provisions

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

“The enactment of section 102(c) of title 35,Public Law 108–453; the ‘CREATE Act’) [see Short Title of 2004 Amendment note set out under section 1 of this title], the amendments of which are stricken by subsection (c) of this section [amending section 103 of this title]. The United States Patent and Trademark Office shall administer section 102(c) of title 35,United States Patent and Trademark Office .”

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.

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

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.

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

This section shall take effect on the date of the enactment of this Act [ Sept. 16, 2011 ] 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.”

Relief as to filing date of patent application or patent affected by postal situation beginning on Mar. 18, 1970 , and ending on or about Mar. 30, 1970 , 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 section 1(a) of Pub. L. 92–34, formerly set out in a note under section 111 of this title.