§ 103. — Conditions for patentability; nonobvious subject matter.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC103]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 10--PATENTABILITY OF INVENTIONS
Sec. 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.
(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).
(c) 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.
(July 19, 1952, ch. 950, 66 Stat. 798; Pub. L. 98-622, title I,
Sec. 103, Nov. 8, 1984, 98 Stat. 3384; Pub. L. 104-41, Sec. 1, Nov. 1,
1995, 109 Stat. 351; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,
Sec. 4807(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-591.)
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.
Amendments
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.''
Effective Date of 1999 Amendment
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec. 4807(b)],
Nov. 29, 1999, 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 [Nov. 29, 1999].''
Effective Date of 1995 Amendment
Section 3 of Pub. L. 104-41 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 [Nov. 1,
1995] 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
Section 106 of Pub. L. 98-622 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 [Nov. 8, 1984], 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 [Nov. 8, 1984], 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 [Nov. 8, 1984].
``(d) No United States patent granted before the date of enactment
of this Act [Nov. 8, 1984] 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 [Nov. 8,
1984] to have their rights determined on the basis of the substantive
law in effect prior to the date of enactment.''
Section Referred to in Other Sections
This section is referred to in sections 273, 282 of this title.
