2104 Requirements of 35 U.S.C. 101
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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.
Patents are not granted for all new and useful inventions and discoveries.
- For example, the subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits a patent to be granted only for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
35 U.S.C. 101 has been interpreted as imposing four requirements, which are described below.
I. DOUBLE PATENTING PROHIBITED
35 U.S.C. 101 prevents two patents issuing on the same invention to the same applicant.
- The “same invention” means that identical subject matter is being claimed.
- If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.
II. NAMING OF INVENTOR
The inventor(s) must be the applicant in an application filed before September 16, 2012, (except as otherwise provided in pre-AIA 37 CFR 1.41(b)) and the inventor or each joint inventor must be identified in an application filed on or after September 16, 2012.
III. SUBJECT MATTER ELIGIBILITY
A claimed invention must be eligible for patenting.
There are two criteria for determining subject matter eligibility:
- (a) first, a claimed invention must fall within one of the four categories of invention recited in 35 U.S.C. 101, i.e., process, machine, manufacture, or composition of matter; and
- (b) second, a claimed invention must be directed to patent-eligible subject matter and not to a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception).
The judicial exceptions are subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).
IVI. UTILITY
A rejection on the ground of lack of utility is appropriate when:
- it is not apparent why the invention is “useful” because applicant has failed to identify any specific and substantial utility and there is no well established utility, or
- an assertion of specific and substantial utility for the invention is not credible.
Such a rejection can include the more specific grounds of inoperativeness, such as inventions involving perpetual motion.
A rejection under 35 U.S.C. 101 for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy.
2104.01 Barred by Atomic Energy Act
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