美國專利改革AIA後的102條款

筆記

bitlaw網站所載的102條款的追蹤修正內容表示，102整個被改寫！

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

(a) NOVELTY; PRIOR ART.--A person shall be entitled to a patent unless--

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) EXCEPTIONS.--

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.--A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if--

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.--A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if--

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.--Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if--

(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.--For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application--

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

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 - (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 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 an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; 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.

除了以下情況外，發明應獲准專利：

102(a)(1)

專利申請案涉及的發明「已經曾被專利」、「記載於公開文件」或「公開使用或販售」，或在該專利申請案有效申請日之前「被公眾知悉」；或

102(a)(2)

專利申請案所涉及的發明已經在有效申請日前描述於「其他發明人」在之前申請的相關「領證專利」中，或是「公開或視為公開的專利」中。

例外：

102(b)(1)
在有效申請日前一年之內的揭露不能作為專利申請案所主張發明的前案，如果（也就符合下列規定的揭露不會影響專利所載發明的新穎性）：

102(b)(1)(A)

揭露的人為專利的發明人、共同發明人，或其他直接或間接由發明人或共同發明人授權取得的人；或

102(b)(1)(B)

專利標的被發明人、共同發明或其他被發明人授權取得的人所公眾公開。

102(b)(2)

在前述102(a)(2)所規範的先前公開不得成為前案（也就是即便是其他人的先申請案，若符合下列條款也不得成為前案），如果：

102(b)(2)(A)

所揭露的內容是直接或間接由發明人或共同發明所取得；

102(b)(2)(B)

在申請案有效申請日前，由發明人或共同發明人，或直接或間接由發明人授權取得的他人所公開揭露；或

102(b)(2)(C)

在發明申請案有效申請日前，相關的發明由擁有該申請案的同人或是應該授讓的人所揭露。

102(c)
同人或應該授讓的人所提出的專利申請案，不被自己揭露的內容影響新穎性，如果：
102(c)(1)
在共同研發合同下的一或多方在有效申請日前的先前揭露；
102(c)(2)
在共同研發合同下，專利申請案主張的發明活動；
102(c)(3)
在共同研發合同下，由其中的各方揭露或是經修改而揭露。

102(d)
判斷專利或是申請案是否具有前述102(a)(2)其他發明人揭露的前案時，包括：
102(d)(1)

如果不適用102(a)(2)，發明之有效申請日即為真正的申請日；或是

102(d)(2)

如果專利申請案（包括延續案）主張另一前案優先權，有效申請日為最早申請日。

新修訂的102條於AIA實施日起18月後生效，也就是2013年3月16日（AIA實施日為2011/09/16）。

適用的專利案為申請日（有效申請日）在2013年3月16日當日與以後的專利申請案，以及相關延續案，包括120條規範的CA, CIP案、121條規範的分割案以及主張適用前申請案優先權的專利申請案。

 

Ron
updated on Oct. 19, 2012，之前的分享：http://enpan.blogspot.tw/2011/10/102.html