35 U.S.C.A. § 102, 35 U.S.C.A. § 102
`
`United States Code Annotated - 2000
`35 U.S.C.A. § 102
`UNITED STATES CODE ANNOTATED
`TITLE 35. PATENTS
`PART II—PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
`CHAPTER 10—PATENTABILITY OF INVENTIONS
`
`§ 102. Conditions for patentability; novelty and loss of right to patent
`
`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 a patent granted on an application for patent by another filed in the United States before the
`invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements
`of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent, 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.
`
`CREDIT(S)
`
`1984 Main Volume
`
`(July 19, 1952, c. 950, 66 Stat. 797; July 28, 1972, Pub.L. 92-358, § 2, 86 Stat. 502; Nov. 14, 1975, Pub.L. 94-131, § 5, 89
`Stat. 691.)
`
`2006 Pocket Part Update
`
`(As amended Nov. 29, 1999, Pub.L. 106-113, Div. B, § 1000(a)(9) [S. 1948, Title IV, § 4806], 113 Stat. 1536, 1537-___.)
`
`AMENDMENT OF PAR. (E)
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`<Pub.L. 106-113, Div. B, § 1000(a)(9) [S. 1948, Title IV, §§ 4505, 4508], Nov. 29, 1999, 113 Stat. 1536, 1537-___, 1537-
`___, provided that, effective 1 year after November 29, 1999, and applicable to all applications filed under section 111 of
`Title 35, on or after that date, and all applications complying with section 371 of title 35, that resulted from international
`applications filed on or after that date, and applicable to any such application voluntarily published by the applicant under
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`35 U.S.C.A. § 102, 35 U.S.C.A. § 102
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`procedures established under sections 4501 to 4508 of S. 1948 [see Tables for classification] that is pending 1 year after that
`date, par. (e) is amended to read as follows:>
`
`<(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, except that an international application filed under the treaty defined in section 351(a) shall have
`the effect under this subsection of a national application published under section 122(b) only if the international application
`designating the United States was published under Article 21(2)(a) of such treaty in the English language; 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 a patent shall not be deemed filed in the United States for the purposes of this subsection based on
`the filing of an international application filed under the treaty defined in section 351(a); or.>
`
`HISTORICAL AND STATUTORY NOTES
`
`Paragraphs (a), (b), and (c) are based on 35 U.S.C., 1946 ed., § 31 (R.S. 4886 [derived from Act July 8, 1870, c. 230, § 24,
`16 Stat. 201], amended (1) Mar. 3, 1897, c. 391, § 1, 29 Stat. 692, (2) May 23, 1930, c. 312, § 1, 46 Stat. 376, (3) Aug. 5,
`1939, c. 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 § 104 contains
`the substance of title 35 U.S.C., 1946 ed., § 72 (R.S. 4923 [derived from Act July 8, 1870, c. 230, § 62, 16 Stat. 208] ).
`
`Paragraph (d) is based on 35 U.S.C., 1946 ed., § 32, first paragraph (R.S. 4887 [derived from Act July 8, 1870, c. 230, § 25,
`16 Stat. 201] (first paragraph), amended (1) Mar. 3, 1897, c. 391, § 3, 29 Stat. 692, 693, (2) Mar. 3, 1903, c. 1019, § 1, 32 Stat.
`1225, 1226, (3) June 19, 1936, c. 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 United States.
`
`Paragraph (e) is new and enacts the rule of Milburn v. Davis-Bournonville, 270 U.S. 390, by reason of which a United States
`patent disclosing an invention dates from the date of filing the application for the purpose of anticipating a subsequent inventor.
`
`Paragraph (f) indicates the necessity for the inventor as the party applying for patent. Subsequent sections permit certain
`persons to apply in place of the inventor under special circumstances.
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`35 U.S.C.A. § 102, 35 U.S.C.A. § 102
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`Paragraph (g) is derived from title 35 U.S.C., 1946 ed., § 69 (R.S. 4920 [derived from Act July 8, 1870, c. 230, § 61, 16 Stat.
`208], amended (1) Mar. 3, 1897, c. 391, § 2, 29 Stat. 692, (2) Aug. 5, 1939, c. 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 invention.
`
`Language relating specifically to designs is omitted for inclusion in subsequent sections.
`
`1999 Acts. Statement by President, see 1999 U.S. Code Cong. and Adm. News, p. 290.
`
`1999 Amendments. Par. (e). Pub.L. 106-113 [S. 1948, § 4505], rewrote par. (e) which formerly read: “the invention was
`described in a patent granted on an application for patent by another filed in the United States before the invention thereof by
`the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2),
`and (4) of section 371(c) of this title before the invention thereof by the applicant for patent, or”
`
`Par. (g). Pub.L. 106-113 [S. 1948, § 4806], revised par. (g). Prior to amendment, par. (g) read as follows: “before the applicant's
`invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In
`determining priority of invention 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.”
`
`1975 Amendments. Par. (e). Pub.L. 94-131 inserted provision for nonentitlement to a patent where the invention was described
`in a patent granted on an international application by another who has fulfilled the requirements of pars. (1), (2), and (4) of §
`371(c) of this title before the invention thereof by the applicant for patent.
`
`1972 Amendments. Par. (d). Pub.L. 92-358 added reference to inventions that were the subject of an inventors' certificate.
`
`1999 Acts. Amendment by Pub.L. 106-113, Div. B, § 1000(a)(9) [S. 1948, Title IV, § 4505], effective 1 year after November 29,
`1999, and applicable to all applications filed under section 111 of Title 35, on or after that date, and all applications complying
`with section 371 of Title 35, that resulted from international applications filed on or after that date, and applicable to any such
`application voluntarily published by the applicant under procedures established under sections 4501 to 4508 of S. 1948] see
`Tables for classification] that is pending 1 year after that date, see Pub.L. 106-113, Div. B, § 1000(a)(9) [S. 1948, Title IV, §
`4508] set out as a note under section 10 of this title.
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`35 U.S.C.A. § 102, 35 U.S.C.A. § 102
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`1975 Acts. Amendment by Pub.L. 94-131 effective Jan. 24, 1978, and applicable on and after that date to patent applications
`filed in the United States and to international applications, where applicable, see § 11 of Pub.L. 94-131, set out as an Effective
`Date note under § 351 of this title.
`
`1972 Acts. Section 3(b) of Pub.L. 92-358 provided that: “Section 2 of this Act [amending this section] shall take effect six
`months from the date when Articles 1-12 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 the United States [Aug. 25, 1973] and shall apply to
`applications thereafter filed in the United States.”
`
`Section 4 of Act July 19, 1952, c. 950, 66 Stat. 815, provided that subsec. (d) of this section should not apply to existing patents
`and pending applications, but that the law previously in effect, namely the first par. of R.S. 4887 [first par. of § 32 of former
`Title 35], should apply to such patents and applications. Said par. of § 32 provided that:
`
`“No person otherwise entitled thereto shall be debarred from receiving a patent for his invention or discovery, nor shall any
`patent be declared invalid by reason of its having been first patented or caused to be patented by the inventor or his legal
`representatives or assigns in a foreign country, unless the application for said foreign patent was filed more than twelve months,
`in cases within the provisions of section 31 of this title, and six months in cases of designs, prior to the filing of the application
`in this country, in which case no patent shall be granted in this country.”
`
`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 of
`such earlier filing dates, see note set out under § 111 of this title.
`
`For legislative history and purpose of Pub.L. 92-358, see 1972 U.S. Code Cong. and Adm.News, p. 2873. See, also, Pub.L.
`94-131, 1975 U.S. Code Cong. and Adm.News, p. 1220.
`
`CROSS REFERENCES
`
`Abandonment of application, see 35 USCA § 133.
`Abandonment of invention for unauthorized disclosure, see 35 USCA § 182.
`Application by other than inventor, see 35 USCA § 118.
`Benefit of earlier filing date in foreign country; right of priority, see 35 USCA § 119.
`Conditions for patentability; non-obvious subject matter, see 35 USCA § 103.
`Effect under Patent Cooperation Treaty of—
`International application designating United States at regularly-filed application for patent, see 35 USCA § 363.
`Patent issued on international application designating United States as regularly-issued patent, see 35 USCA § 375.
`Filing of application in foreign country, see 35 USCA § 184.
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`35 U.S.C.A. § 102, 35 U.S.C.A. § 102
`
`Interferences, see 35 USCA § 135.
`Invention made abroad, see 35 USCA § 104.
`Inventions patentable, see 35 USCA § 101.
`Time of prior use or publication for design patents, see 35 USCA § 172.
`
`Patents, Fed Proc, L Ed, §§ 60:1, 49, 205, 220, 297, 305, 546, 580, 600, 1022, 1023.
`
`FEDERAL PRACTICE AND PROCEDURE
`
`FEDERAL JURY PRACTICE AND INSTRUCTIONS
`
`Instructions, background, procedures, see Devitt, Blackmar & Wolff: Civil § 97.01 et seq.
`
`FEDERAL FORMS
`
`13 Federal Procedural Forms L Ed, Patents §§ 52:2, 52:12-52:14, 52:72, 52:175, 52:192, 52:203, 52:209, 52:210, 52:212,
`52:213, 52:220.
`13A Fed Procedural Forms L Ed, Patents §§ 52:2, 21-26, 271, 376, 382, 396, 413, 420-424, 432, 433, 462.
`14 Am Jur Legal Forms 2d, Patents, §§ 196:41-43.
`19 Am Jur Pl & Pr Forms (Rev), Patents, Form 15.
`
`WEST'S FEDERAL PRACTICE MANUAL
`
`Filing and prosecution of patent application—prosecution of patent application, see West's Federal Administrative Practice §
`3933.
`General knowledge regarding patents—what constitutes patentable invention, see West's Federal Administrative Practice §
`3922.
`Importance of early filing of patent application, see West's Federal Administrative Practice § 3929.
`Infringement—defenses in infringement suit, see West's Federal Administrative Practice § 3970.
`Searches of prior art—preliminary search, see West's Federal Administrative Practice § 3925.
`
`AMERICAN LAW REPORTS
`
`Meaning of term “on sale” in 35 USCA § 102(b), denying patentability to invention which has been on sale for more than one
`year prior to date of patent application. 25 ALR Fed 486.
`Meaning of term “printed publication” under 35 USCA § 102(a) and (b), denying patentability to invention described in printed
`publication before invention by applicant or more than one year prior to date of patent application. 70 ALR Fed 796.
`Patentability of computer programs. 6 ALR Fed 156.
`When does on-sale bar of 35 U.S.C.A. § 102(b), which denies patentability to invention that has been on sale for more than one
`year prior to date of patent application, prevent issuance of valid patent. 155 ALR Fed 1.
`
`CODE OF FEDERAL REGULATIONS
`
`Abandonment of application, see 37 CFR § 1.135 et seq., set out in the Appendix.
`Serial number, filing date, and completion of application, see 37 CFR § 1.53, set out in the Appendix.
`
`LAW REVIEW COMMENTARIES
`
`A critique of the use of secondary considerations in applying the section 103 nonobviousness test for patentability. Note, 28
`B.C.L.Rev. 357 (1987).
`
`Analyzing the new dangers of potential patent controversies: A general guide. Bill Schuurman and D.C. Toedt, III, 41 Bus.Law.
`727 (1986).
`
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