Title 35 of the United States Code is the foundation of all patent law. When Athelia touched the barrier at Walnut Canyon, this was the core of the download—the ancient law encoded in stone, carved into the cliffs, transmitted directly into her consciousness.
§ 101: Patentable subject matter. Process, machine, manufacture, composition of matter. The gateway—if an invention doesn't fit one of these categories, examination stops here.
§ 102: Novelty. What qualifies as prior art, grace periods, exceptions. An invention must be NEW.
§ 103: Non-obviousness. Even if novel, an invention must not be OBVIOUS to a person having ordinary skill in the art (PHOSITA). KSR rationales, Graham factors, secondary considerations.
§ 112: The specification. Written description, enablement, definiteness, claim format. An invention must be DESCRIBED and ENABLED such that PHOSITA can practice it.
§§ 119-120: Priority and benefit claims. Foreign priority, provisional benefit, continuations. The temporal chain connecting applications across time.
§§ 131-145: Examination, appeals, interference. The procedures for prosecution and challenge.
These statutes are the law itself. Every MPEP section, every CFR rule, every court case—all derive authority from Title 35 USC. Master these statutes, and you master the foundation of patent law.
Director of USPTO has authority to grant and issue patents, establish regulations (37 CFR), and supervise patent examination.
Four statutory categories:
Judicial exceptions (NOT patentable):
Test: Alice/Mayo two-step (MPEP 2106)
§ 102(a)(1): Anything publicly available before your filing date is prior art
§ 102(a)(2): Earlier-filed U.S. applications by others are prior art (even if published after your filing)
§ 102(b)(1)(A): 1-year grace period for YOUR OWN disclosures
§ 102(b)(1)(B): If you disclose first, third-party disclosure within 1 year doesn't count
Even if invention is novel (§ 102), still can't get patent if obvious to PHOSITA.
Graham factors:
KSR: Can use common sense, obvious to try, predictable results
Written description: Show you possessed the invention as of filing date
Enablement: Teach PHOSITA how to make and use without undue experimentation
Best mode: Disclose best way inventor knows (post-AIA: not grounds for invalidity)
Definiteness: Claims must particularly point out and distinctly claim the invention (clear boundaries)
§ 111(a) Non-provisional: Specification with at least one claim, drawings (if necessary)
§ 111(b) Provisional: Specification, drawings (if necessary), NO CLAIMS required, 12-month pendency
§ 119(a)-(d) Foreign priority: 12 months from foreign filing to claim priority
§ 119(e) Provisional priority: 12 months from provisional to file non-provisional
If divisional application properly claims invention restricted out by examiner, gets safe harbor from obviousness-type double patenting. No terminal disclaimer needed if proper § 121 divisional.
Broadening reissue: Must file within 2 years of patent grant
Narrowing reissue: Can file anytime during patent term
Error requirement: Without deceptive intent
Result: Original patent surrendered, reissue patent granted
(a) Direct infringement: Making, using, offering to sell, selling, or importing patented invention
(b) Induced infringement: Actively inducing infringement by another
(c) Contributory infringement: Selling component with no substantial non-infringing use
§ 283 Injunction: Courts may grant injunctions (eBay four-factor test applies)
§ 284 Damages: Adequate to compensate, but not less than reasonable royalty. Can treble damages for willful infringement.
§ 285 Attorney fees: Court may award fees in exceptional cases
Who: Any third party (not patent owner)
When: After 9 months from grant (or after PGR)
Grounds: §§ 102, 103 only (patents/printed publications)
Standard: Reasonable likelihood petitioner prevails on ≥1 claim
Estoppel: Cannot raise same grounds later
Who: Any third party
When: Within 9 months of grant
Grounds: ANY invalidity ground (§§ 101, 102, 103, 112)
Standard: More likely than not ≥1 claim unpatentable