Prior Art & Obviousness 2009: The PTO and CAFC Perspective on Patent Law Sections 102 & 103

Overview

Why You Should Attend

35 USC 102 (Prior Art) continues to be re-understood and re-interpreted by the PTO and CAFC to account for the unforeseen in how the concept of "prior art" and circumstance collide in the 21st century.  Prior Art on the web - here today, gone tomorrow, but always recoverable - maybe; on sale, or "ready for patenting" in the age of biotech and nanotech, what is truly enabled?  For every Practitioner, it is a necessity to stay current on the touchstone of patentability: 35 USC 102. 

And, let's not overlook the most common reason any application is rejected or patent held invalid: 35 USC 103, Obviousness. The Pandora's box of KSR or "what in the world were they thinking when they wrote that opinion" will be explored from inside and outside the PTO. Are the KSR effects uniform, or do they vary subject to subject in the PTO and Courthouse?

The first 2 hours of the course are devoted to the PTO view of 102 and 103, i.e., what Examiners are using and relying on in examination and found in the most current edition of the MPEP. The remainder of the program is devoted to recent case law decided by the CAFC and Supreme Court as it relates to each segment of 102 and 103. The final hour is spent on 102(e).  

What You Will Learn

Patent practitioners are obliged to live with Section 102 because it just “is.” The language in the respective
Sections (a)-(g) seems to bump into itself and can almost never be simply read and applied quickly and easily. For
those wanting to have a working understanding of Section 102, including recent re-interpretations, you must attend
this program. Then, you will become the “go to” office resource for PTO and litigation analysis of Section 102 issues.

• When is a patent a “patent” under the statute?
• Public accessibility - on the web, on the shelf, in the mail, “routine” practices
• Four steps to the abyss of (d)
• Ex parte 102(g); abandon, suppress, conceal
• Actual vs. constructive reduction to practice (where (e) trumps (g))
• What have they done to 102(e)?
• The issues raised by successive common owner filings
• A walk through the “guidelines” and “timelines”
• Impact of proper/improper benefit claims on: a) prior art date of a reference, and b) effective filing date of the application being examined

Everyone thought they knew how to apply 35 USC 103. Start with Graham v. John Deere, add a pinch of teaching/suggestion/motivation, and finish with secondary considerations. Well…not anymore. It is a new day; KSR is plowing through the PTO, District Courts, and CAFC. You need to know what’s happening subject by subject.

Who Should Attend

The program is geared to patent lawyers who have some familiarity with 35 USC Sections 102/103 and 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 insight into the statute, recent amendments, and case law.

Special Features

Live Webcast - Simultaneous live webcast of the San Francisco session is available for individual viewing. Webcast participants will receive streaming audio and/or video of the program, view and print the Course Handbook, and have the ability to submit questions electronically.

For more information click on the Live Webcast link in the Related Items box.

Special Bonus to all Registrants

All attendees will receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment the program and to stand alone as a permanent reference. PLI's Course Handbooks represent the definitive thinking of the nation's finest legal minds, and are often the standard reference in the field.

Please Note: Webcast attendees will receive a downloadable version of the Handbook one business day prior to the program.

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.

Schedule

Please plan to arrive with enough time to register before the conference begins. A networking breakfast will be available upon your arrival.

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

9:00 Introduction

John M. White

9:15 Section 102 and the MPEP, from (a) to (g) (or What Isn’t in the Statute But Is in the Law?)

A. “Public knowledge” vs. “public use,” “in this country”

• When is a patent a “patent”: (a) vs. (b) vs. (d)
• Availability on the “web,” on the shelf, and routine practices
• The “invention” and “experimental use”
• Date of “invention”
• Abandonment under (c) and (g)
• The foreign origin C.I.P. trap; “claimed or could have claimed”
• Derivation: “authorship” vs. “inventorship”
• 102(g): Inter-parte and ex-parte and NAFTA/WTO

B. Section 103 and the PTO KSR Guidelines

• From Jefferson to Graham v. John Deere: A brief history— how we got here
• The CAFC and the BPAI
• KSR—our just desserts; can we recover? The PTO Guidelines

Michael A. Davitz, Gary A. Walpert, Carl B. Wischhusen

11:00 Networking Break

11:15 Section 102(a) – (d)

A. 102(a) & (b) and the CAFC 2008

• “Public” availability is the vanguard of (a) and (b)
• When is a patent a “patent” under the statute?
• Prior art date for “cancelled” subject matter
• Public accessibility—on the web, on the shelf, in the mail, “routine” practices
• Effects of “confidentiality”
• Third party public use of inventor’s own work
• “On sale” by whom and under what circumstances

B. 102(c) & (d): Abandonment & the “Four Steps”

• “Abandonment” and intent of the inventor
• Deliberate surrender of rights
• Four steps to the abyss of (d)
• Do the foreign and U.S. claims have to be the same for (d) to apply
• The C.I.P. trap
• “Allowed applications” vs. “patents” under (d)

Annemarie Hassett, Rebecca Goldman Rudich

12:15 Lunch

Afternoon Session: 1:30 p.m. – 4:45 p.m.

1:30 102(f) & (g): 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)

Aaron B. Bernstein, Benjamin C. Hsing

2:30 35 USC 103 and the CAFC

• KSR in 2008 in the District Courts
• KSR as implemented by the CAFC
• Where do we go from here?

Rebecca Goldman Rudich

3:30 Networking Break

3:45 102(e) and the 9 Most Common Timelines: Effects of Priority Under 119, 120, 121, 365

• What have they done to 102(e)?
• The issues raised by successive common owner filings
• The published U.S. application
• The published international application
• The issued U.S. patent
• Priority under 119, 120, or 365
• A walk through the “guidelines” and “timelines” 
• Ethical requirements under 102(a) through (g)

Robert J. Spar, John M. White

4:45 Adjourn

Faculty

Chairperson(s)

John M. White, Berenato & White, LLC; Director of Patent Professional Development, Practising Law Institute

Speaker(s)

Aaron B. Bernstein, Lead Intellectual Property Counsel, Motorola, Inc.
Michael A. Davitz, M.D., Axinn, Veltrop & Harkrider LLP
Annemarie Hassett, Goodwin Procter LLP
Benjamin C. Hsing, Kaye Scholer LLP
Rebecca Goldman Rudich, McKenna Long & Aldridge LLP
Robert J. Spar, Director (Retired), Office of Patent Legal Administration, United States Patent and Trademark Office
Gary A. Walpert, Byrne Poh LLP
Carl B. Wischhusen, Cohen Pontani Lieberman & Pavane LLP

Program Attorney(s)

Seema Lal Meehan, Program Attorney, Practising Law Institute

CLE Credit

Travel Information

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.