35 U.S.C. 102 (pre-AIA) — Conditions for patentability; novelty and loss of right to patent
Ninth Edition, Revision 01.2024
[Editor Note: With the exception of subsection (g)*), not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 102 for the law otherwise applicable.]
A person shall be entitled to a patent unless —
- (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
- (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.
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691; subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948 sec. 4505); subsection (g) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806); subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec. 13205, 116 Stat. 1903.)
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011) provided that tax strategies are deemed to be within the prior art (see AIA § 14 ).)
*NOTE: The provisions of 35 U.S.C. 102(g) , as in effect on March 15, 2013, shall apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note) , if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in section 100(i) of title 35, United States Code, that occurs before March 16, 2013; 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.
Cited authority
- 35 U.S.C. 100 (note) AIA First inventor to file provisions
- 35 U.S.C. 102 Conditions for patentability; novelty
- 35 U.S.C. 122 Confidential status of applications; publication of patent applications
- 35 U.S.C. 351 Definitions
- PCT Article 21 International Publication
- 35 U.S.C. 135 (pre-AIA) Interferences
- 35 U.S.C. 291 (pre-AIA) Interfering patents
- 35 U.S.C. 104 (pre-AIA) Invention made abroad
- AIA § 14 Tax strategies deemed within the prior art
- 35 U.S.C. 100 Definitions
- 35 U.S.C. 120 Benefit of earlier filing date in the United States
- 35 U.S.C. 121 Divisional applications
- 35 U.S.C. 365 Right of priority; benefit of the filing date of a prior application
Cited by
- 1111 SIR Publication and Effect
- 1207.03(a) Determining Whether a Ground of Rejection is New
- 1302.14 Reasons for Allowance
- 1440 Examination of Reissue Application
- 1449.02 Interference in Reissue
- 1504.01(d) Simulation
- 1504.02 Novelty
- 1504.03 Nonobviousness
- 1504.06 Double Patenting
- 1504.20 Benefit Under 35 U.S.C. 120
- 1608 Examination
- 1610 The Action
- 1810 Filing Date Requirements
- 1893.03(d) Unity of Invention
- 1901.02 Information Which Can Be Relied on in Protest
- 2004 Aids to Compliance With Duty of Disclosure
- 201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
- 210 Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application
- 2103 Patent Examination Process
- 2104 Requirements of 35 U.S.C. 101
- 2105 Patent Eligible Subject Matter — Living Subject Matter
- 2106 Patent Subject Matter Eligibility
- 2107.01 General Principles Governing Utility Rejections
- 2109 Inventorship
- 211.05 Sufficiency of Disclosure in Prior-Filed Application
- 2111 Claim Interpretation; Broadest Reasonable Interpretation
- 2111.01 Plain Meaning
- 2111.03 Transitional Phrases
- 2112 Requirements of Rejection Based on Inherency; Burden of Proof
- 2112.02 Process Claims
- 2113 Product-by-Process Claims
- 2114 Apparatus and Article Claims — Functional Language
- 2120 Rejection on Prior Art
- 2120.01 Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent
- 2120.02 Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(a) or (b): Knowledge by Others, or Public Use, or On Sale
- 2121 Prior Art; General Level of Operability Required to Make a Prima Facie Case
- 2121.01 Use of Prior Art in Rejections Where Operability is in Question
- 2121.02 Compounds and Compositions — What Constitutes Enabling Prior Art
- 2121.03 Plant Genetics — What Constitutes Enabling Prior Art
- 2124.01 Tax Strategies Deemed Within the Prior Art
- 2126 Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b), and (d)
- 2126.01 Date of Availability of a Patent as a Reference
- 2126.02 Scope of Reference’s Disclosure Which Can Be Used to Reject Claims When the Reference Is a “Patent” but Not a “Publication”
- 2127 Domestic and Foreign Patent Applications as Prior Art
- 2128 “Printed Publications” as Prior Art
- 2128.01 Level of Public Accessibility Required
- 2129 Admissions as Prior Art
- 213.03 Time for Filing U.S. Nonprovisional Application
- 2131 Anticipation — Application of 35 U.S.C. 102
- 2131.01 Multiple Reference 35 U.S.C. 102 Rejections
- 2131.02 Genus-Species Situations
- 2131.03 Anticipation of Ranges
- 2131.04 Secondary Considerations
- 2131.05 Nonanalogous or Disparaging Prior Art
- 2132 Pre-AIA 35 U.S.C. 102(a)
- 2132.01 Overcoming a Pre-AIA 35 U.S.C. 102(a) Rejection based on a Printed Publication or Patent
- 2133 Pre-AIA 35 U.S.C. 102(b)
- 2133.01 Rejections of Continuation-In-Part (CIP) Applications
- 2133.02 Rejections Based on Publications and Patents
- 2133.02(a) Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication or Patent
- 2133.03 Rejections Based on “Public Use” or “On Sale”
- 2133.03(a) “Public Use”
- 2133.03(b) “On Sale”
- 2133.03(c) The “Invention”
- 2133.03(d) “In This Country”
- 2133.03(e) Permitted Activity; Experimental Use
- 2133.03(e)(3) “Completeness” of the Invention
- 2133.03(e)(5) Experimentation and Degree of Supervision and Control
- 2134 Pre-AIA 35 U.S.C. 102(c)
- 2135 Pre-AIA 35 U.S.C. 102(d)
- 2135.01 The Four Requirements of Pre-AIA 35 U.S.C. 102(d)
- 2136 Pre-AIA 35 U.S.C. 102(e)
- 2136.01 Status of Unpublished or Published as Redacted U.S. Application as a Reference Under Pre-AIA 35 U.S.C. 102(e)
- 2136.02 Content of the Prior Art Available Against the Claims
- 2136.03 Critical Reference Date
- 2136.04 Different Inventive Entity; Meaning of “By Another”
- 2136.05 Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e)
- 2136.05(a) Antedating a Pre-AIA 35 U.S.C. 102(e) Reference
- 2136.05(b) Showing The Reference Is Describing An Inventor's Or At Least One Joint Inventor's Own Work
- 2137 Pre-AIA 35 U.S.C. 102(f)
- 2137.02 [Reserved]
- 2138 Pre-AIA 35 U.S.C. 102(g)
- 2138.01 Interference Practice
- 2138.02 “The Invention Was Made in This Country”
- 2138.03 “By Another Who Has Not Abandoned, Suppressed, or Concealed It”
- 2138.04 “Conception”
- 2138.05 “Reduction to Practice”
- 2138.06 “Reasonable Diligence”
- 2139 Rejections Under Pre-AIA 35 U.S.C. 102
- 2139.01 Effective Filing Date of a Claimed Invention Under Pre-AIA 35 U.S.C. 102
- 2139.02 Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e)
- 2139.03 Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 102
- 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103
- 2141.01 Scope and Content of the Prior Art
- 2141.01(a) Analogous and Nonanalogous Art
- 2141.02 Differences Between Prior Art and Claimed Invention
- 2141.03 Level of Ordinary Skill in the Art
- 2142 Legal Concept of Prima Facie Obviousness
- 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness
- 2143.01 Suggestion or Motivation To Modify the References
- 2143.02 Reasonable Expectation of Success Is Required
- 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions
- 2144.08 Obviousness of Species When Prior Art Teaches Genus
- 2144.09 Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers)
- 2145 Consideration of Applicant’s Rebuttal Arguments and Evidence
- 2146 Pre-AIA 35 U.S.C. 103(c)
- 2146.01 Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c)
- 2146.02 Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c)
- 2146.03 Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c)
- 2146.03(a) Provisional Rejection (Obviousness) Under 35 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e)
- 2147 Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b)
- 2148 Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 103
- 2150 Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America Invents Act
- 2151 Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
- 2152 Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
- 2152.01 Effective Filing Date of the Claimed Invention
- 2152.02 Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a Printed Publication, or in Public Use, on Sale, or Otherwise Available to the Public)
- 2152.02(a) Patented
- 2152.02(b) Described in a Printed Publication
- 2152.02(c) In Public Use
- 2152.02(d) On Sale
- 2152.02(e) Otherwise Available to the Public
- 2152.02(f) No Requirement of “By Others”
- 2152.03 Admissions
- 2152.04 The Meaning of “Disclosure”
- 2152.05 Determining Whether To Apply 35 U.S.C. 102(a)(1) or 102(a)(2)
- 2152.06 Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) Rejection
- 2152.07 Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102
- 2153 Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1)
- 2153.01 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor-Originated Disclosure Exception)
- 2153.01(a) Grace Period Inventor-Originated Disclosure Exception
- 2153.02 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C. 102(a)(1) (Inventor-Originated Prior Public Disclosure Exception)
- 2154 Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date of the Claimed Invention
- 2154.01 Prior Art Under AIA 35 U.S.C. 102(a)(2) “U.S. Patent Documents”
- 2154.01(a) WIPO Published Applications
- 2154.01(b) Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d)
- 2154.01(c) Requirement Of “Names Another Inventor”
- 2154.01(d) Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application
- 2154.02 Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2)
- 2154.02(a) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception)
- 2154.02(b) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Prior Public Disclosure Exception)
- 2154.02(c) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment)
- 2155 Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections
- 2155.01 Showing That the Disclosure Was Made by the Inventor or a Joint Inventor
- 2155.02 Showing That the Subject Matter Disclosed Had Been Previously Publicly Disclosed by the Inventor or a Joint Inventor
- 2155.03 Showing That the Disclosure was Made, or That Subject Matter had Been Previously Publicly Disclosed, by Another Who Obtained the Subject Matter Disclosed Directly or Indirectly From the Inventor or a Joint Inventor
- 2155.04 Enablement
- 2155.05 Who May File an Affidavit or Declaration Under 37 CFR 1.130
- 2155.06 Situations in Which an Affidavit or Declaration Is Not Available
- 2156 Joint Research Agreements
- 2157 Improper Naming of Inventors
- 2158 AIA 35 U.S.C. 103
- 2158.01 Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 103
- 2159 Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of the AIA
- 2159.01 Applications Filed Before March 16, 2013
- 2159.02 Applications Filed on or After March 16, 2013
- 2159.03 Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013
- 2159.04 Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013
- 2161.01 Computer Programming, Computer Implemented Inventions, and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
- 2163 Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph, “Written Description” Requirement
- 2173.01 Interpreting the Claims
- 2173.02 Determining Whether Claim Language is Definite
- 2173.04 Breadth Is Not Indefiniteness
- 2173.05(k) Aggregation
- 2183 Making a Prima Facie Case of Equivalence
- 2185 Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs
- 2209 Ex Parte Reexamination
- 2217 Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302
- 2246 Decision Ordering Reexamination under 35 U.S.C. 304
- 2247 Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied
- 2258 Scope of Ex Parte Reexamination
- 2301 Interference Proceedings
- 2301.02 Definitions
- 2301.04 Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013
- 2302 Consult an Interference Practice Specialist
- 2303 Completion of Examination
- 2303.01 Issuance and Suspension
- 2303.02 Other Outstanding Issues with Patents
- 2304.01(b) Obtaining Control Over Involved Files
- 2304.02 Applicant Suggestion
- 2304.02(b) Counts and Corresponding Claims
- 2304.02(c) Explaining Priority
- 2304.04 Examiner Suggestion
- 2304.04(b) Requiring a Claim
- 2304.04(c) Rejections Based on Disclaimer
- 2305 Requiring a Priority Showing
- 602.08(b) Inventor Signature and Name
- 704.11(a) Examples of Information Reasonably Required
- 706 Rejection of Claims
- 706.02 Rejection on Prior Art
- 706.02(a) [Reserved]
- 706.02(a)(2) [Reserved]
- 706.02(b)(2) [Reserved]
- 706.02(c) [Reserved]
- 706.02(c)(2) [Reserved]
- 706.02(d) [Reserved]
- 706.02(e) [Reserved]
- 706.02(f) [Reserved]
- 706.02(f)(1) [Reserved]
- 706.02(f)(2) [Reserved]
- 706.02(g) [Reserved]
- 706.02(h) [Reserved]
- 706.02(i) [Reserved]
- 706.02(k) [Reserved]
- 706.02(l) [Reserved]
- 706.06 Rejection of Claims Copied From Patent
- 706.07(a) Final Rejection, When Proper on Second Action
- 707 Examiner’s Letter or Action
- 708.02(a) Accelerated Examination
- 710.02(c) Specified Time Limits: Situations in Which Used
- 711.06(a) Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References
- 715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)
- 715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits
- 715.01(a) Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor
- 715.01(b) Reference and Application Have Common Assignee
- 715.01(c) Reference Is Publication of Inventor’s Own Invention
- 715.01(d) Activities Applied Against the Claims
- 715.02 How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims
- 715.03 Genus-Species, Practice Relative to Cases Where Predictability Is in Question
- 715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations
- 715.05 U.S. Patent or Application Publication Claiming Same Invention
- 715.07 Facts and Documentary Evidence
- 715.07(a) Diligence
- 715.07(b) Interference Testimony Sometimes Used
- 715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country
- 715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
- 716.10 Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103
- 717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)
- 717.01 Affidavit or Declaration Under 37 CFR 1.130
- 717.01(a) Declarations or Affidavits under 37 CFR 1.130(a) – Attribution
- 717.01(a)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(a)
- 717.01(b) Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure
- 717.01(b)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(b)
- 717.01(b)(2) Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure
- 717.01(c) Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations
- 717.01(d) U.S. Patent or Application Publication Claiming Same Invention
- 718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)
- 803.02 Election of Species Requirements – Markush Claims
- 804 Definition of Double Patenting
- 804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement
- 806.05(f) Process of Making and Product Made
- 806.05(h) Product and Process of Using
- 821.04 Rejoinder
- 821.04(b) Rejoinder of Process Requiring an Allowable Product
- 901.01 Canceled Matter in U.S. Patent Files
- 901.02 Abandoned Applications
- 901.03 Pending Applications
- 901.04 U.S. Patents
- 901.05 Foreign Patent Documents
- 901.06(a) Scientific and Technical Information Center (STIC)
- 904.01(c) Analogous Arts
- 35 U.S.C. 102 Conditions for patentability; novelty
- 35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter
- 35 U.S.C. 172 (pre-AIA) Right of priority
- 35 U.S.C. 363 (pre-AIA) International application designating the United States: Effect
- 35 U.S.C. 374 (pre-AIA) Publication of international application
- 35 U.S.C. 375 (pre-AIA) Patent issued on international application: Effect
- 37 CFR 1.104 Nature of examination
- 37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art
- 37 CFR 41.200 Procedure; pendency
- 37 CFR 41.201 Definitions
- 37 CFR 41.202 Suggesting an interference