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2.0 – The Essentials

The essentials are the fundamentals of patent law.  These items should be extremely well understood if you want to pass the patent bar exam.  The essentials consist of the following: 35 U.S.C. § 101, 102, 103 and 112.

35 U.S.C. § 101 –  Defining what is patentable.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Section 101 of 35 U.S.C. defines what is patentable.  The  four main groups of patentable inventions include machine, manufacture, composition of matter and process.  Additionally, a product-by-process claim can be used but only the product and not the process is patentable.  Living subject matter is patentable but only under certain conditions.  More regarding this code is discussed in section 2.1.

35 U.S.C. § 102 –  Patent rejections due to anticipation.  

This section of the United States Code contains relevant subsections (a)-(g).  Each subsection defines different conditions for when a claim is rejected as unpatentable due to prior art fully disclosing the newly claimed subject matter.  These types of rejections are called anticipation rejections.  Unlike 35 U.S.C. §103 rejections that are discussed below these rejections rely on prior art which teaches each and every aspect of a claimed invention.  More regarding this code is discussed in section 2.2.

35 U.S.C. § 103 –  Patent rejections due to obviousness.  

This section of the United States Code contains relevant paragraphs (1)-(3).

The first paragraph defines rejections due to obviousness.  Basically, if a new invention would have been obvious to a person skilled in the art to which it pertains relative to the prior art then the invention is not patentable.

The second paragraph defines obviousness and how it is practiced in regards to subject matter in biotechnology.

The third paragraph defines obviousness and how it is practiced in regards to joint ownership.  More specific examples are given regarding joint research agreements.

35 U.S.C. § 112 –  Patent rejections due to the form and disclosure of the application.

This section of the United States Code contains relevant paragraphs (1),(2) and (3).

The first paragraph lays out how the specification needs to contain a written description of the invention with proper enablement that would allow the public to make and use the invention.  This must be accompanied by a disclosure of the best mode of using the invention thought of at the time the application was filed.  Both of these must be in clear, concise and exact terms as to fully disclose these aspects to the public.

The second paragraph lays out the requirement of definitiveness for the application.  In summary, the application needs to properly define what the inventor regards as their own invention through distinctly and particularly pointing out the boundaries of what the patent will cover through claim language.

The sixth paragraph defines how a invention may be claimed through means or step for function.  This language can be used allowing the applicant to not specify the structure, material or acts which support this function but instead relying on the corresponding disclosure in the specification.