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Seminar  Seminar

Prior Art, Obviousness, and the America Invents Act in 2013


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Why you should attend

Patent reform has arrived: what will be its impact on those touchstones of patentability, prior art and obviousness?  102 was already a complicated concept for patent practitioners, having undergone evolving interpretations in the PTO and CAFC.  How will the AIA now complicate matters further?  What aspects of current 102 understanding carry over to new 102? How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is truly enabled?  This program will allow you to obtain an essential working understanding of this newly complicated statute, including recent interpretations, case law, explore and understand the statutory revisions.  Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is continuing to evolve as a result of KSR already 6 years old). Explore 103 from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSR pigeonhole!

What you will learn

  • The new AIA 102 and its dates. What is the new “grace period”?
  • Is it truly a world-wide landscape of “filing date” prior art?
  • The “effective filing date” is now global - if it publishes/issues in the U.S.
  • Is Old 102 really gone……or, is it preserved in other guises?
  • A thorough review of the recent KSR 103 “guidelines” inside the PTO
  • Examine the impact of proper and improper benefit claims on the prior art date of a reference and the effective filing date of the application being examined
  • How do you apply 103 post-KSR and the 2010 PTO Guidelines and recent CAFC decisions outside the PTO?

Who should attend

The program is geared to patent lawyers who have some familiarity with existing 35 USC Sections 102/103 and regularly work with the statute in either litigation or patent prosecution. The course will advance the knowledge of all attendees from their respective starting points and provide new insights into the statute, recent amendments, and case law.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Morning Session: 9:00 a.m. - 12:15 p.m.

9:00 Overview and the Dual System (Back File and New Filings) of Prior Art & Rules (March 16, 2013) 

John M. White

9:15 Post AIA Section 102: The Complete Breakdown of 102 (a)-(d)

  • Defining novelty in our 1st to file system
  • Patented, described in a publication, on-sale
  • Public use and “otherwise” available
  • “Effective” filing date (US, or anywhere?)
  • Timelines – Is there a grace period?
  • Prior filings and publications
  • Disclosure exceptions under (b) - Personal or collective?
  • Common ownership exceptions under (c)
  • Effects of “confidentiality”

Annemarie Hassett, Leonard R. Svensson

11:00 Networking Break

11:15 Section 103: Inside the PTO KSR Guidelines

  • Back to the future – Still evolving
  • The CAFC and the PTO Board find that most old precedent still applies!
  • The PTO Guidelines and updates of their application in examining

Michael O’Neill

12:15 Lunch

Afternoon Session: 1:30 p.m. - 5:00 p.m.

1:30 Old 102: is it really gone? And, Which Definitions and Practices Carry Over to New 102?

  • Derivation - and the time limits!
  • Gone from litigation forever?
  • “Authorship” vs. “inventorship”
  • Conception and communication to “another”
  • What happened to abandon, suppress, conceal?
  • Actual vs. constructive reduction to practice (does this still matter…)
  • Diligence (notebooks be gone?)
  • 102(c): Do all elements of the CREATE Act (2004) carry over untouched?

Aaron B. Bernstein, Benjamin C. Hsing

2:30 35 USC 103 and the CAFC

  • KSR in 2012-13 in the District Courts
  • KSR as implemented by the CAFC in 2012-13
  • Rader: “…from my perspective 103 has not changed…under KSR.”
  • Where do we go from here: Did the AIA change anything but a word?

Rebecca Goldman Rudich

3:30 Networking Break

3:45 The Concept of Old 102(e) Recast as New 102 (a)(2) as Implemented by New 102(d): Effects of Priority Under 119, 120, 121, 365

  • Effective filing dates under (d) - the new critical date
  • NAFTA/WTO - any remaining effect?
  • How the 102(e) concept has gone global for US applicants
  • The published U.S. application
  • The published international application
  • The published foreign application
  • The issued U.S. patent
  • Priority under 119, 120, or 365
  • A walk through the “guidelines” and “timelines”

Robert J. Spar, John M. White

5:00 Adjourn

Chairperson(s)
John M. White ~ Berenato & White, LLC; Director of Patent Professional Development, PLI,
Speaker(s)
Aaron Bernstein ~ Lead Intellectual Property Counsel, Motorola Solutions, Inc.
Annemarie Hassett ~ Goodwin Procter LLP
Benjamin C. Hsing ~ Kaye Scholer LLP
Michael W. O'Neill ~ Novak Druce Connolly Bove + Quigg LLP
Rebecca Goldman Rudich ~ Vedder Price P.C.
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.) OPLA, USPTO,
Leonard Richard Svensson ~ Birch, Stewart, Kolasch & Birch, LLP
Program Attorney(s)
Seema Lal Meehan ~ Program Attorney, Practising Law Institute
New York City Seminar Location

PLI New York Center, 810 Seventh Avenue at 53rd Street (21st floor), New York, New York 10019. Message Center, program days only: (212) 824-5733.

New York City Hotel Accommodations

The New York Hilton & Towers, 1335 Avenue of the Americas, New York, NY 10019. 1 block from PLI Center. Reservations 1-800-HILTONS or, 1-877-NYC-HILT. Please mention that you are booking a room under the Practising Law Institute Corporate rate and the Client File # is 0495741. You can also make reservations online to access Practising Law Institute rates.

The Warwick New York Hotel, 65 West 54th Street New York, NY 10019. 1 block from PLI Center. Reservations 800-223-4099 or, hotel direct 212-247-2700. Please mention that you are booking a room under the Practising Law Institute Corporate rate. Reservations on line at www.warwickhotelny.com Click reservations in menu bar on left. Select desired dates. In 'Special Rates' drop down window select Corporate Rate. In 'Rate Code' enter PLIN. Click search and select desired room type and rate plan. Or, you may email reservation requests to: res.ny@warwickhotels.com

Sheraton New York Times Square Hotel, 811 7th Avenue, New York, NY 10019, 1-800-325-3535 or (212) 581-1000. When calling, please mention Practising Law Institute and mention SET#311155. You may also book online.

PLI's live programs are approved in all states that require mandatory continuing legal education for attorneys, except Arizona. Please be sure to check with your state for details.


Please check the CLE Calculator above each product description for CLE information specific to your state.


Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys.  All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.

Please note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.

If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.

Credit will be granted only to the individual on record as the purchaser unless alternative arrangements (prearranged groupcast) are made in advance.

Why you should attend

Patent reform has arrived: what will be its impact on those touchstones of patentability, prior art and obviousness?  102 was already a complicated concept for patent practitioners, having undergone evolving interpretations in the PTO and CAFC.  How will the AIA now complicate matters further?  What aspects of current 102 understanding carry over to new 102? How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is truly enabled?  This program will allow you to obtain an essential working understanding of this newly complicated statute, including recent interpretations, case law, explore and understand the statutory revisions.  Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is continuing to evolve as a result of KSR already 6 years old). Explore 103 from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSR pigeonhole!

What you will learn

  • The new AIA 102 and its dates. What is the new “grace period”?
  • Is it truly a world-wide landscape of “filing date” prior art?
  • The “effective filing date” is now global - if it publishes/issues in the U.S.
  • Is Old 102 really gone……or, is it preserved in other guises?
  • A thorough review of the recent KSR 103 “guidelines” inside the PTO
  • Examine the impact of proper and improper benefit claims on the prior art date of a reference and the effective filing date of the application being examined
  • How do you apply 103 post-KSR and the 2010 PTO Guidelines and recent CAFC decisions outside the PTO?

Who should attend

The program is geared to patent lawyers who have some familiarity with existing 35 USC Sections 102/103 and regularly work with the statute in either litigation or patent prosecution. The course will advance the knowledge of all attendees from their respective starting points and provide new insights into the statute, recent amendments, and case law.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Morning Session: 9:00 a.m. - 12:15 p.m.

9:00 Overview and the Dual System (Back File and New Filings) of Prior Art & Rules (March 16, 2013) 

John M. White

9:15 Post AIA Section 102: The Complete Breakdown of 102 (a)-(d)

  • Defining novelty in our 1st to file system
  • Patented, described in a publication, on-sale
  • Public use and “otherwise” available
  • “Effective” filing date (US, or anywhere?)
  • Timelines – Is there a grace period?
  • Prior filings and publications
  • Disclosure exceptions under (b) - Personal or collective?
  • Common ownership exceptions under (c)
  • Effects of “confidentiality”
Annemarie Hassett, Leonard R. Svensson

11:00 Networking Break

11:15 Section 103: Inside the PTO KSR Guidelines
  • Back to the future – Still evolving
  • The CAFC and the PTO Board find that most old precedent still applies!
  • The PTO Guidelines and updates of their application in examining
Michael O’Neill

12:15 Lunch

Afternoon Session: 1:30 p.m. - 5:00 p.m.

1:30 Old 102: is it really gone? And, Which Definitions and Practices Carry Over to New 102?
  • Derivation - and the time limits!
  • Gone from litigation forever?
  • “Authorship” vs. “inventorship”
  • Conception and communication to “another”
  • What happened to abandon, suppress, conceal?
  • Actual vs. constructive reduction to practice (does this still matter…)
  • Diligence (notebooks be gone?)
  • 102(c): Do all elements of the CREATE Act (2004) carry over untouched?
Aaron B. Bernstein, Benjamin C. Hsing

2:30 35 USC 103 and the CAFC
  • KSR in 2012-13 in the District Courts
  • KSR as implemented by the CAFC in 2012-13
  • Rader: “…from my perspective 103 has not changed…under KSR.”
  • Where do we go from here: Did the AIA change anything but a word?
Rebecca Goldman Rudich

3:30 Networking Break

3:45 The Concept of Old 102(e) Recast as New 102 (a)(2) as Implemented by New 102(d): Effects of Priority Under 119, 120, 121, 365
  • Effective filing dates under (d) - the new critical date
  • NAFTA/WTO - any remaining effect?
  • How the 102(e) concept has gone global for US applicants
  • The published U.S. application
  • The published international application
  • The published foreign application
  • The issued U.S. patent
  • Priority under 119, 120, or 365
  • A walk through the “guidelines” and “timelines”
Robert J. Spar, John M. White

5:00 Adjourn
Chairperson(s)
John M. White ~ Berenato & White, LLC; Director of Patent Professional Development, PLI,
Speaker(s)
Aaron Bernstein ~ Lead Intellectual Property Counsel, Motorola Solutions, Inc.
Annemarie Hassett ~ Goodwin Procter LLP
Benjamin C. Hsing ~ Kaye Scholer LLP
Michael W. O'Neill ~ Novak Druce Connolly Bove + Quigg LLP
Rebecca Goldman Rudich ~ Vedder Price P.C.
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.) OPLA, USPTO,
Leonard Richard Svensson ~ Birch, Stewart, Kolasch & Birch, LLP
Program Attorney(s)
Seema Lal Meehan ~ Program Attorney, Practising Law Institute

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (415) 498-2800

San Francisco Hotel Accommodations

The Palace Hotel, 2 New Montgomery Street, San Francisco, California 94105. Call (800) 917-7456 seven days a week from 6:00 am to 12:00 am (PDT) and mention you are attending this program at Practising Law Institute to receive the preferred rate. For online reservations, go to www.sfpalace.com/pli to receive the preferred rate.

Due to high demand we recommend reserving hotel rooms as early as possible.

PLI's live programs are approved in all states that require mandatory continuing legal education for attorneys, except Arizona. Please be sure to check with your state for details.


Please check the CLE Calculator above each product description for CLE information specific to your state.


Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys.  All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.

Please note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.

If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.

Credit will be granted only to the individual on record as the purchaser unless alternative arrangements (prearranged groupcast) are made in advance.

This is a webcast of the live San Francisco session.

Why you should attend

Patent reform has arrived: what will be its impact on those touchstones of patentability, prior art and obviousness?  102 was already a complicated concept for patent practitioners, having undergone evolving interpretations in the PTO and CAFC.  How will the AIA now complicate matters further?  What aspects of current 102 understanding carry over to new 102? How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is truly enabled?  This program will allow you to obtain an essential working understanding of this newly complicated statute, including recent interpretations, case law, explore and understand the statutory revisions.  Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is continuing to evolve as a result of KSR already 6 years old). Explore 103 from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSR pigeonhole!

What you will learn

  • The new AIA 102 and its dates. What is the new “grace period”?
  • Is it truly a world-wide landscape of “filing date” prior art?
  • The “effective filing date” is now global - if it publishes/issues in the U.S.
  • Is Old 102 really gone……or, is it preserved in other guises?
  • A thorough review of the recent KSR 103 “guidelines” inside the PTO
  • Examine the impact of proper and improper benefit claims on the prior art date of a reference and the effective filing date of the application being examined
  • How do you apply 103 post-KSR and the 2010 PTO Guidelines and recent CAFC decisions outside the PTO?

Who should attend

The program is geared to patent lawyers who have some familiarity with existing 35 USC Sections 102/103 and regularly work with the statute in either litigation or patent prosecution. The course will advance the knowledge of all attendees from their respective starting points and provide new insights into the statute, recent amendments, and case law.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

All times are P.D.T.

Morning Session: 9:00 a.m. - 12:15 p.m.  (P.D.T.)

9:00 Overview and the Dual System (Back File and New Filings) of Prior Art & Rules (March 16, 2013)

John M. White

9:15 Post AIA Section 102: The Complete Breakdown of 102 (a)-(d)

  • Defining novelty in our 1st to file system
  • Patented, described in a publication, on-sale
  • Public use and “otherwise” available
  • “Effective” filing date (US, or anywhere?)
  • Timelines – Is there a grace period?
  • Prior filings and publications
  • Disclosure exceptions under (b) - Personal or collective?
  • Common ownership exceptions under (c)
  • Effects of “confidentiality”
Annemarie Hassett, Leonard R. Svensson

11:00 Networking Break

11:15 Section 103: Inside the PTO KSR Guidelines
  • Back to the future – Still evolving
  • The CAFC and the PTO Board find that most old precedent still applies!
  • The PTO Guidelines and updates of their application in examining
Michael O’Neill

12:15 Lunch

Afternoon Session: 1:30 p.m. - 5:00 p.m.  (P.D.T.)

1:30 Old 102: is it really gone? And, Which Definitions and Practices Carry Over to New 102?
  • Derivation - and the time limits!
  • Gone from litigation forever?
  • “Authorship” vs. “inventorship”
  • Conception and communication to “another”
  • What happened to abandon, suppress, conceal?
  • Actual vs. constructive reduction to practice (does this still matter…)
  • Diligence (notebooks be gone?)
  • 102(c): Do all elements of the CREATE Act (2004) carry over untouched?
Aaron B. Bernstein, Benjamin C. Hsing

2:30 35 USC 103 and the CAFC
  • KSR in 2012-13 in the District Courts
  • KSR as implemented by the CAFC in 2012-13
  • Rader: “…from my perspective 103 has not changed…under KSR.”
  • Where do we go from here: Did the AIA change anything but a word?
Rebecca Goldman Rudich

3:30 Networking Break

3:45 The Concept of Old 102(e) Recast as New 102 (a)(2) as Implemented by New 102(d): Effects of Priority Under 119, 120, 121, 365
  • Effective filing dates under (d) - the new critical date
  • NAFTA/WTO - any remaining effect?
  • How the 102(e) concept has gone global for US applicants
  • The published U.S. application
  • The published international application
  • The published foreign application
  • The issued U.S. patent
  • Priority under 119, 120, or 365
  • A walk through the “guidelines” and “timelines”
Robert J. Spar, John M. White

5:00 Adjourn
Chairperson(s)
John M. White ~ Berenato & White, LLC; Director of Patent Professional Development, PLI,
Speaker(s)
Aaron Bernstein ~ Lead Intellectual Property Counsel, Motorola Solutions, Inc.
Annemarie Hassett ~ Goodwin Procter LLP
Benjamin C. Hsing ~ Kaye Scholer LLP
Michael W. O'Neill ~ Novak Druce Connolly Bove + Quigg LLP
Rebecca Goldman Rudich ~ Vedder Price P.C.
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.) OPLA, USPTO,
Leonard Richard Svensson ~ Birch, Stewart, Kolasch & Birch, LLP
Program Attorney(s)
Seema Lal Meehan ~ Program Attorney, Practising Law Institute
PLI makes every effort to accredit its Live Webcasts. Please check the CLE Calculator above for CLE information specific to your state.

PLI's Live Webcasts are approved for MCLE credit (unless otherwise noted in the product description) in the following states/territories:  Alabama, Alaska, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana1, Iowa*, Kansas*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York2, Ohio3, Oklahoma, Oregon*, Pennsylvania4, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia5, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.

*PLI will apply for credit upon request.

Arizona: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.

Arkansas and Oklahoma: Audio-only live webcasts are not approved for credit.
 

1Indiana: Considered a distance education course. There is a 6 credit limit per year.

2New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video programs or live webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.

3Ohio: To confirm that the live webcast has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per biennial compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.

4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.

5Virginia: All distance learning courses are to be done in an educational setting, free from distractions.


Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon and keynote speakers.

Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.

If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.

Related Items

On-Demand  On-Demand Programs

Prior Art, Obviousness, and the America Invents Act in 2012 Aug. 6, 2012

Handbook  Course Handbook Archive

Prior Art, Obviousness, and the America Invents Act in 2013  
Prior Art, Obviousness, and the America Invents Act in 2012 John M. White,
 
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"A good overview and insight on AIA."
Harsh Pangi, SAP Labs

"Excellent comparison of the AIA with existing law."
Joseph Gortych, Opticus IP Law PLLC

"Very impressed with the level of knowledge of the speakers."
Jeremy Kriegel, Marshall, Gerstein & Borun LLP

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