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? 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 complicated statute, including recent re-interpretations, case law, and explore the statutory revisions. Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is changing as a result of KSR (already 5 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
- Publication/Accessibility - on the web, on the shelf, in the mail, “routine” practices
- The four steps of (d)
- Ex parte 102 (g): abandon, suppress, conceal, and notebooks
- Actual vs. constructive reduction to practice
- A close look at 102 (e)
- What issues are raised by successive common owner filings?
- 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?
- A thorough review of the recent KSR “guidelines” and “timelines”
- 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?
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.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 Overview and the Dual System of Prior Art (March 16, 2013)
John M. White
9:15 Section 102, the MPEP and the CAFC
“Public knowledge” v. “public use”, “in this country”
- When is a patent a “patent”: (a) v. (b) v. (d)
- Availability on the “web”, on the shelf, and routine practices
- The “invention” & “experimental use”
- Date of “invention”
- Abandonment under (c) and (g)
- The foreign origin C.I.P. trap; “claimed or could have claimed”
- Derivation: “authorship” v. “inventorship”
- 102(g): Inter-parte and ex-parte and NAFTA/WTO
Melissa Hunter-Ensor, Ph.D., Mark J. Thronson
Section 103 and the PTO KSR Guidelines
- Back to the Future
- The CAFC and the BPAI find that most old precedent still applies!
- The PTO Guidelines and updates of their application in examining.
Grace Pan, Carl B. Wischhusen
11:00 Networking Break
11:15 The AIA
New 102(a) - (d) (effective March 16, 2013)
- Defining Novelty in our 1st to File System
- Timelines
- Prior Filings and Publications
- Disclosure Exceptions under (b) - Personal or collective?
- Common Ownership Exceptions under (c).
- Effects of “confidentiality”
- Effective Filing Dates under (d) - the new critical date.
- “On sale” by whom and under what circumstances
Leonard R. Svensson, John M. White
12:15 Lunch
Afternoon Session: 1:30 p.m. - 5:00 p.m.
1:30 Old 102(f) & (g) and New 102(c)(plus Continuity under 102(d)(2)): Joint Ventures and Co-
Development
- Derivation
- “Authorship” vs. “inventorship”
- Conception and communication to “another”
- Ex-parte 102(g); abandon, suppress, conceal
- Actual vs. constructive reduction to practice (where (e) trumps (g))
- Diligence
- 102(f) and (g) under 103(c)
Benjamin C. Hsing, John M. White
2:30 35 USC 103 and the CAFC
- KSR in 2012 in the District Courts
- KSR as implemented by the CAFC in 2012
- Where do we go from here: AIA Change anything but a word?
Rebecca Goldman Rudich
3:30 Networking Break
3:45 102(e) now and forever ( i.e.,new 102(d)): Effects of Priority Under 119, 120, 121, 365
- How 102(e) concept has gone global
- 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”
John M. White, Robert J. Spar
5:00 Adjourn
Chairperson(s)
John M. White ~ Berenato & White, LLC; Director of Patent Professional Development, PLI,
Speaker(s)
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.) OPLA, USPTO,
Program Attorney(s)
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 N495741. Reservations on line at www.hilton.com and enter the same Client File # in the Corporate ID # field 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.
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