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
Patrick R. Jewik, David D. Schumann
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.
Rebecca Goldman Rudich
11:00 Networking Break
11:15 The AIA
New 102(a) - (d) (effective March 16, 2013)
- Defining Novelty in our 1st to File System
- 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
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-
- “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))
- 102(f) and (g) under 103(c)
Aaron B. Bernstein, Benjamin C. Hsing
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
John M. White
~ Berenato & White, LLC; Director of Patent Professional Development, PLI,
~ Lead Intellectual Property Counsel, Motorola Solutions, Inc.
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.
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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.
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