Notes on 35 U.S.C. § 103 : US Code - Notes

Search Notes on 35 U.S.C. § 103 : US Code - Notes

(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;
Pub. L. 108-453, Sec. 2, Dec. 10, 2004, 118 Stat. 3596.)
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
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."
EFFECTIVE DATE OF 2004 AMENDMENT
Pub. L. 108-453, Sec. 3, Dec. 10, 2004, 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 [Dec. 10, 2004].
"(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, 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."