Statutory Authority for Examination

35 U.S.C. 131

Examination of application.

The Director shall cause an examination to be made of the application

and the alleged new invention; and if on such examination it appears that the applicant

is entitled to a patent under the law, the Director shall issue a patent therefor.

The main conditions precedent to the grant of a patent to an applicant are

set forth in

35 U.S.C.

101

,

102

,

103

, and

112

.

35 U.S.C. 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.

See MPEP §§

2104

–

2109

and

2157

for a discussion of inventions that are not considered to

be patentable under

35

U.S.C. 101

.

35 U.S.C. 100

Definitions.

[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only applicable to

patent applications and patents subject to the first inventor to file provisions of

the AIA (

35 U.S.C. 100 (note)

). See

pre-AIA 35 U.S.C. 100(e)

for

paragraph (e) as applicable to patent applications and patents not subject to the

first inventor to file provisions of the AIA.]

When used in this title unless the context otherwise indicates -

(a) The term “invention” means invention or discovery.

(b) The term “process” means process, art, or method, and includes a

new use of a known process, machine, manufacture, composition of matter, or

material.

(c) The terms “United States” and “this country” mean the United

States of America, its territories and possessions.

(d) The word “patentee” includes not only the patentee to whom the

patent was issued but also the successors in title to the patentee.

(e) The term “third-party requester” means a person requesting ex

parte reexamination under section

302

who is not the patent

owner.

(f) The term "inventor" means the individual or, if a

joint invention, the individuals collectively who invented or discovered the

subject matter of the invention.

s not only the patentee to whom the

patent was issued but also the successors in title to the patentee.

(e) The term “third-party requester” means a person requesting ex

parte reexamination under section

302

who is not the patent

owner.

(f) The term "inventor" means the individual or, if a

joint invention, the individuals collectively who invented or discovered the

subject matter of the invention.

(g) The terms "joint inventor" and "coinventor" mean any

1 of the individuals who invented or discovered the subject matter of a joint

invention.

(h) The term "joint research agreement" means a written

contract, grant, or cooperative agreement entered into by 2 or more persons or

entities for the performance of experimental, developmental, or research work in

the field of the claimed invention.

(i)

(1) The term "effective filing date" for a claimed

invention in a patent or application for patent means—

(A) if subparagraph (B) does not apply, the

actual filing date of the patent or the application for the patent

containing a claim to the invention; or

(B) the filing date of the earliest

application for which the patent or application is entitled, as to

such invention, to a right of priority under section

119

,

365(a)

, or

365(b)

or to the benefit of an earlier filing

date under section

120

,

121

,

365(c)

, or

386(c)

.

(2) The effective filing date for a claimed

invention in an application for reissue or reissued patent shall be

determined by deeming the claim to the invention to have been contained in

the patent for which reissue was sought.

to

such invention, to a right of priority under section

119

,

365(a)

, or

365(b)

or to the benefit of an earlier filing

date under section

120

,

121

,

365(c)

, or

386(c)

.

(2) The effective filing date for a claimed

invention in an application for reissue or reissued patent shall be

determined by deeming the claim to the invention to have been contained in

the patent for which reissue was sought.

(j) The term "claimed invention" means the subject matter

defined by a claim in a patent or an application for a patent.

Pre-AIA 35 U.S.C. 100

Definitions.

[Editor Note: Pre-AIA 35 U.S.C. 100(e) as set forth below is

not

applicable

to any patent application subject to the first inventor to file

provisions of the AIA (see

35 U.S.C. 100 (note)

). For an

application or patent subject to the first inventor to file provisions of the AIA,

see

35 U.S.C.

100

.]

When used in this title unless the context otherwise

indicates -

*****

(e) The term “third-party requester” means a person

requesting ex parte reexamination under section 302 or inter partes reexamination

under section 311 who is not the patent owner.

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