Title 35 — Patents
Part II · Chapter 10 — Patentability of Inventions
§ 103. Conditions for patentability; non-obvious subject matter
Statutory text
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Legislative history
Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.
July 19, 1952, ch. 950, 66 Stat. 798 · 66 Stat. 798
Enacted · 35 U.S.C. § 103
July 19, 1952, ch. 950, 66 Stat. 798
Source evidence
Code source credit
July 19, 1952, ch. 950, 66 Stat. 798Patent Law Amendments Act of 1984
Pub. L. 98–622 title I § 103 · 98 Stat. 3383
Inserted · 35 U.S.C. § 103
Pub. L. 98–622 inserted “Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”
Source evidence
Code amendment note
Pub. L. 98–622 inserted “Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”Enacted provision · exact public law section
Sec. 103. prior art Section 103 of title 35, United States Code, is amended by adding at the end thereof the following: “Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”.Pub. L. 104–41 § 1 · 109 Stat. 351
Amended · 35 U.S.C. § 103
Pub. L. 104–41 designated first and second pars. as subsecs. (a) and (c), respectively
Added · 35 U.S.C. § 103
Pub. L. 104–41 added subsec. (b)
Source evidence
Code amendment note
Pub. L. 104–41 designated first and second pars. as subsecs. (a) and (c), respectively, and added subsec. (b).Enacted provision · exact public law section
SECTION 1. BIOTECHNOLOGICAL PROCESS PATENTS; CONDITIONS FOR PATENTABILITY; NONOBVIOUS SUBJECT MATTER. Section 103 of title 35, United States Code, is amended— (1) by designating the first paragraph as subsection (a); (2) by designating the second paragraph as subsection (c); and (3) by inserting after the first paragraph the following: “(b) (1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if— “(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and “(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person. “(2) A patent issued on a process under paragraph (1)— “(A) shall also contain the claims to the composition of matter used in or made by that process, or “(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154. “(3) For purposes of paragraph (1), the term ‘biotechnological process’ means— “(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to— “(i) express an exogenous nucleotide sequence, “(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or “(iii) express a specific physiological characteristic not naturally associated with said organism; “(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and “(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).”.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 div. B § 1000(a)(9)(tIV)(s4807)(a) · 113 Stat. 1501
Substituted · 35 U.S.C. § 103(c)
Pub. L. 106–113 substituted “one or more of subsections (e), (f), and (g)” for “subsection (f) or (g)”
Source evidence
Code amendment note
Subsec. (c). Pub. L. 106–113 substituted “one or more of subsections (e), (f), and (g)” for “subsection (f) or (g)”.Cooperative Research and Technology Enhancement (CREATE) Act of 2004
Pub. L. 108–453 § 2 · 118 Stat. 3596
Amended · 35 U.S.C. § 103(c)
Pub. L. 108–453 amended subsec. (c) generally. Prior to amendment, subsec. (c) read as follows: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”
Source evidence
Code amendment note
Subsec. (c). Pub. L. 108–453 amended subsec. (c) generally. Prior to amendment, subsec. (c) read as follows: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”Enacted provision · exact public law section
SEC. 2. COLLABORATIVE EFFORTS ON CLAIMED INVENTIONS. Section 103(c) of title 35, United States Code, is amended to read as follows: “(c) (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. “(2) For purposes of this subsection, subject matter developed by another person 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 if— “(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; “(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and “(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. “(3) For purposes of paragraph (2), the term ‘joint research agreement’ means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.” .Pub. L. 112–29 § 3(c) · 125 Stat. 287
Amended · 35 U.S.C. § 103
Pub. L. 112–29, § 3(c), amended section generally. Prior to amendment, section consisted of subsecs. (a) to (c) and related to conditions for patentability; non-obvious subject matter
Source evidence
Code amendment note
Pub. L. 112–29, § 3(c), amended section generally. Prior to amendment, section consisted of subsecs. (a) to (c) and related to conditions for patentability; non-obvious subject matter.Enacted provision · exact public law section
(c) Conditions for Patentability; Nonobvious Subject Matter.— Section 103 of title 35, United States Code, is amended to read as follows: “§ 103. Conditions for patentability; non-obvious subject matter “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.” .Effective date note
Amendment by section 3(c) of 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 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.Pub. L. 112–29 § 20(j) · 125 Stat. 287
Struck · 35 U.S.C. § 103(a); 35 U.S.C. § 103(c)(1)
Pub. L. 112–29, § 20(j), struck out “of this title” after “102”
Source evidence
Code amendment note
Subsecs. (a), (c)(1). Pub. L. 112–29, § 20(j), struck out “of this title” after “102”.Enacted provision · exact public law section
(j) Unnecessary References.— (1) In general.— Title 35, 35 USC 2, 12, 32, 41, 103, 104, 111, 119–123, 132, 135, 143, 145, 146, 154, 157, 162, 172, 182–186, 207, 210, 257, 267. United States Code, is amended by striking “of this title” each place that term appears. (2) Exception.— The amendment made by paragraph (1) shall not apply to the use of such term in the following sections of title 35, United States Code: (A) Section 1(c). (B) Section 101. (C) Subsections (a) and (b) of section 105. (D) The first instance of the use of such term in section 111(b)(8). (E) Section 161. (F) Section 164. (G) Section 171. (H) Section 251(c), as so designated by this section. (I) Section 261. (J) Subsections (g) and (h) of section 271. (K) Section 287(b)(1). (L) Section 289. (M) The first instance of the use of such term in section 375(a).Effective date note
Amendment by section 3(c) of 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 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.
6 of 8 references resolved to an enrolled provision · 2 partial
Notes
Historical and Revision Notes
There is no provision corresponding to the first sentence explicitly stated in the present statutes, but the refusal of patents by the Patent Office, and the holding of patents invalid by the courts, on the ground of lack of invention or lack of patentable novelty has been followed since at least as early as 1850. This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.
The second sentence states that patentability as to this requirement is not to be negatived by the manner in which the invention was made, that is, it is immaterial whether it resulted from long toil and experimentation or from a flash of genius.
Editorial Notes
Amendments1984–2011 · 5 rounds
2011
Pub. L. 112–29, § 3(c), amended section generally. Prior to amendment, section consisted of subsecs. (a) to (c) and related to conditions for patentability; non-obvious subject matter.
Subsecs. (a), (c)(1). Pub. L. 112–29, § 20(j), struck out “of this title” after “102”.
2004
Subsec. (c). Pub. L. 108–453 amended subsec. (c) generally. Prior to amendment, subsec. (c) read as follows: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”
1999
Subsec. (c). Pub. L. 106–113 substituted “one or more of subsections (e), (f), and (g)” for “subsection (f) or (g)”.
1995
Pub. L. 104–41 designated first and second pars. as subsecs. (a) and (c), respectively, and added subsec. (b).
1984
Pub. L. 98–622 inserted “Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”
Statutory Notes and Related Subsidiaries
Effective Date of 2011 Amendment
Amendment by section 3(c) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on , 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 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on , and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.
Effective Date of 2004 Amendment
Pub. L. 108–453, § 3, , 118 Stat. 3596, provided that:
“(a) In General.—
The amendments made by this Act [amending this section] shall apply to any patent granted on or after the date of the enactment of this Act [].
“(b) Special Rule.—
The amendments made by this Act shall not affect any final decision of a court or the United States Patent and Trademark Office rendered before the date of the enactment of this Act, and shall not affect the right of any party in any action pending before the United States Patent and Trademark Office or a court on the date of the enactment of this Act to have that party’s rights determined on the basis of the provisions of title 35, United States Code, in effect on the day before the date of the enactment of this Act.”
Effective Date of 1999 Amendment
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4807(b)], , 113 Stat. 1536, 1501A–591, provided that: “The amendment made by this section [amending this section] shall apply to any application for patent filed on or after the date of the enactment of this Act [].”
Effective Date of 1995 Amendment
Pub. L. 104–41, § 3, , 109 Stat. 352, provided that: “The amendments made by section 1 [amending this section] shall apply to any application for patent filed on or after the date of enactment of this Act [] and to any application for patent pending on such date of enactment, including (in either case) an application for the reissuance of a patent.”
Effective Date of 1984 Amendment
Pub. L. 98–622, title I, § 106, , 98 Stat. 3385, provided that:
“(a) Subject to subsections (b), (c), (d), and (e) of this section, the amendments made by this Act [probably should be “this title”, meaning title I of Pub. L. 98–622, enacting section 157 of this title, amending this section and sections 116, 120, 135, and 271 of this title, and enacting a provision set out as a note under section 157 of this title] shall apply to all United States patents granted before, on, or after the date of enactment of this Act [], and to all applications for United States patents pending on or filed after the date of enactment.
“(b) The amendments made by this Act shall not affect any final decision made by the court or the Patent and Trademark Office before the date of enactment of this Act [], with respect to a patent or application for patent, if no appeal from such decision is pending and the time for filing an appeal has expired.
“(c) Section 271(f) of title 35, United States Code, added by section 101 of this Act shall apply only to the supplying, or causing to be supplied, of any component or components of a patented invention after the date of enactment of this Act [].
“(d) No United States patent granted before the date of enactment of this Act [] shall abridge or affect the right of any person or his successors in business who made, purchased, or used prior to such effective date anything protected by the patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased, or used, if the patent claims were invalid or otherwise unenforceable on a ground obviated by section 103 or 104 of this Act [amending this section and sections 116 and 120 of this title] and the person made, purchased, or used the specific thing in reasonable reliance on such invalidity or unenforceability. If a person reasonably relied on such invalidity or unenforceability, the court before which such matter is in question may provide for the continued manufacture, use, or sale of the thing made, purchased, or used as specified, or for the manufacture, use, or sale of which substantial preparation was made before the date of enactment of this Act, and it may also provide for the continued practice of any process practiced, or for the practice of which substantial preparation was made, prior to the date of enactment, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the date of enactment.
“(e) The amendments made by this Act shall not affect the right of any party in any case pending in court on the date of enactment [] to have their rights determined on the basis of the substantive law in effect prior to the date of enactment.”
Credits
1952–2011 · 6 acts
- 1952July 19, 1952, ch. 950, 66 Stat. 798
- 1984Pub. L. 98–622, title I, § 103, , 98 Stat. 3384
- 1995Pub. L. 104–41, § 1, , 109 Stat. 351
- 1999Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4807(a)], , 113 Stat. 1536, 1501A–591
- 2004Pub. L. 108–453, § 2, , 118 Stat. 3596
- 2011Pub. L. 112–29, §§ 3(c), 20(j), , 125 Stat. 287, 335.
Show as published
(July 19, 1952, ch. 950, 66 Stat. 798; Pub. L. 98–622, title I, § 103, , 98 Stat. 3384; Pub. L. 104–41, § 1, , 109 Stat. 351; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4807(a)], , 113 Stat. 1536, 1501A–591; Pub. L. 108–453, § 2, , 118 Stat. 3596; Pub. L. 112–29, §§ 3(c), 20(j), , 125 Stat. 287, 335.)