Unlike the requirements of the Andean Community or under the European Patent Convention, under the United States system Patents shall be granted for inventions, designs or plants whose subject matter is susceptible to be patentable, are new and fulfill the requirement of non-obviousness.
Patentable Subject Matter:
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 therefore, subject to the legal conditions and requirements.
Novelty:
An invention would not fulfill the novelty requirement if:
- 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
- The claimed invention was described in a patent issued under §151 or in an application for patent published or deemed published under §122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed with respect to any subject matter described in the patent or application before the effective filing date of the claimed invention.
Determining prior art: to determine whether a patent or application for patent is prior art to a claimed invention, it shall be considered to have been effectively filed
- Under regular circumstances, as of the actual filing date of the patent or the application for patent; or
- As of the filing date of the earliest application that describes the subject matter when the patent or the application of the patent is entitled to
Based upon one or more prior filed applications for patent.
Exceptions:
Disclosures made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention. For this provision to apply, it has to met one of the following conditions:
- 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
- The subject matter disclosed had 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 before such disclosure.
Disclosures appearing in Applications and Patents shall not be prior art to a claimed invention if:
- The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
- Before being effectively filed, the subject matter disclosed had 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
- The subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention.
When the latter disposition refer to “owned by the same person or subject to an obligation of assignment to the same person”, it refers to:
- Subject matter developed and claimed invention made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
- Claimed invention made as a result of activities undertaken within the scope of the joint research agreement and
- The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
When the Application discloses or is amended to disclose the names of the parties to the joint research agreement.
Non-obviousness:
Even if the invention is not identically disclosed or described as it was mentioned above, a patent for a claimed invention may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date if the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
Patentability shall not be negated by the manner in which the invention was made.
