Law School Up Close

Tackling Title 35 - Part 1

This is the first installment of my “miniseries” on Title 35 of our United States Code of Laws (Title 35 USC). It contains most of the legal regulations regarding Patents. When I was learning about the USPTO registration exam prior to deciding I was going to take it, this manual, the MPEP kept coming up; but Title 35 contains the "black letter law" regarding patentability. The MPEP is a manual that Patent Examiners use to apply the law, and changes quite often. So when you see pages and threads saying not to read the MPEP cover to cover, seriously, don’t. In fact, some portions of the manual have never been edited.

We will be starting at the beginning of Part 2 of the Title, Patentability of Inventions and Grant of Patents, as this is where the focus of the Exam will be. The United States Patent and Trademark Office (USPTO) tests on a specific subset of materials regarding the process of granting a patent. The specific sections of the title that are normally tested are 101, 102, 103, and 112.

Title 35 USC 101 - Inventions 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.

This section of the title has remained largely unchanged since Thomas Jefferson originally inked it with his knack for eloquent boilerplate. And that is really what this is. That is not to say it is not meaningful, just standard. For instance, the section “machine, manufacture, or composition of matter” tells us what is considered to be statutory subject matter. One cannot patent an idea, or a principle of science.

The term “invents or discovers” tells us that the phenomena can be an explicit observation of an something that is implicit to nature, Penicillin being an example of something that was discovered. The “whoever” preceding sets the standard that only the first person to invent is allowed to obtain a patent.

To invent is a two part process. One must first "conceive" the invention. This means a fully formed idea, end to end. Someone who is knowledgeable of the subject matter should be able to take your work and create your invention. The second part is the "reduction to practice". This means either an actual reduction to practice, you made the invention in real life, or a "constructive" reduction to practice. The latter is achieved by filing a patent application. The reason that this is possible is because the drawings and explanations included in your patent application (particularly the drawings) should be enough for some in the field to create your invention.

The utility clause of this statement “useful process”, is probably never ever going to be the point of contention on the exam or in real life. The fact is that unless someone is trying to patent an unmagnificent pile of garbage, then there would be no reason to not find some utility that the invention could serve.

The America Invents Act

Title 35 USC 102 is the most substantial portion of the title in regards to patentability. It goes into technical details regarding Prior Art that will determine a majority of real world cases. In 2011, congress passed and President Obama signed the Leahy-Smith America Invents Act(AIA). The AIA, which went into effect on March 16, 2013 (M16 ‘13, burn this date into your brain), significantly changed portions of the 35 USC 102. This is one thing that makes studying for the Patent Bar difficult. We need to know both versions of the law until there are no more cases being tried under the old law. There are actually cases which I will delve into later that are tried under a “transition” version of the law. That is, if at least one element of the case pre-dates M16 ‘13 but some portion is from afterward, the case is handled under the new law (AIA), except that old 102(g) applies.

It is, in my opinion useless to attempt to summarize the changes of AIA from a high level, but there is one change that gets a particular notoriety. Under our original law, the United States was under the “first to invent” mantra in relation to filing. Even if one inventor filed first, another could claim that they had completed the two parts of invention, (1) conception and (2) reduction to practice. The AIA changed the law so that the “first inventor to file” now has the right to the patent.

In reality, the expansion to what can be called Prior Art has caused more changes to the overall patentability of an invention. Specifically, it allowed for more foreign work to be considered Prior Art, and some things that were previously considered Prior Art (PA) now have earlier effective filing dates (EFD’s). On the other hand, the law gave way to new exceptions when it comes to ‘secret’ sales and public use.

At the end of the day, you have to learn both laws because the new laws are written against the old ones, that is, they are not sufficient standing alone. We are currently expected to field questions relating to both laws, but the AIA has recently received a vast majority of the exam coverage.

In the next part of this series, I will be tackling 35 USC 102. Please reach out with any suggestions to improve or complete the material in this post!


Ted Rand