See Credit Details Below
Overview
The 35 USC 101 conundrum has become an enigma! What was merely complex or difficult has now become inscrutable. It seems to be case-to-case, examiner-to-examiner, topic-to-topic, and no legislative or Supreme Court help is on the horizon. This program will provide insight from both the PTO and caselaw. The 101-eligibility issue is one that has a long echo. What is the current state of PTO policy and CAFC decision-making and where will we collectively be in the years and decades ahead — during the enforcement period of patents now prosecuted and acquired? Gain some understanding and insight from our presenters.
Prior art (102) (pre and post-AIA) and obviousness (103) are covered inside and outside the USPTO. Obtain an understanding of recent interpretations, along with some perspective on the future of both. Will the Helsinn aftershock obtain any legislative interest?
What You Will Learn
After completing this program, participants will be able to:
- Gain insights on Section 101: what to do?
- Understand 102 and its dates: is the “grace period” real?
- Learn about the “effective filing date” across the globe
- Analyzing 102—pre and post-AIA
- Receive a comprehensive review of post-KSR 103 via CAFC and PTAB precedent
- Learn how to get benefit claims right on the first pass and/or fixing them rapidly! The prior art date of an “effectively filed” reference and the “effective filing date” on the application being examined
This program is geared to patent lawyers/agents who have a daily familiarity with existing 35 USC 101/102/103 in either a litigation or patent prosecution context or both. 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.
Program Level: Intermediate
Prerequisites: None
Advanced Preparation: None
Lecture Topics [Total time 00:06:15]
Segments with an asterisk (*) are available only with the purchase of the entire program.
- Opening Remarks* [00:10:05]
John M. White - 35 USC 101: What Can Still Be Patented in 2023? [01:52:37]
Benjamin C. Hsing, Michael J. Gulliford - Section 102 Conditions for Obtaining a Patent; Novelty: Inside and Outside the PTO – Cases and Decisions [01:03:26]
Sasha G. Rao - KSR and 103: Conditions for Obtaining a Patent; Non-Obvious Subject Matter [01:01:16]
Rebecca Goldman Rudich - 35 USC 112 Patent Specifications – Decisions on Disclosure and Claiming [01:02:51]
Chad M. Rink - The 102(b) Exceptions to Prior Art – Made Simple! [01:19:40]
John M. White
The purchase price of this Web Program includes the following articles from the Course Handbook available online:
- Complete Course Handbook
- Checking in with Alice: A Five Year Look Back
Michael J. Gulliford - Myriad and Mayo and the Evolution of 35 U.S.C. § 101 as It Relates to Genetic and Diagnostic Patents (2023)
Benjamin C. Hsing - Novelty under the AIA: Developments and Best Practices (March 20, 2023)
Sasha G. Rao - Obviousness in Prosecution: Tools You Can Use—Keeping the KSR Genie in the Bottle
Rebecca Goldman Rudich - 35 USC 112 Patent Specifications—Decisions on Disclosure and Claiming
Chad M. Rink - Prior Art under Former (Pre-AIA) § 102 as Compared to AIA § 102 and the AIA Exceptions
John M. White - The 102(b) Exceptions to Prior Art Against Patents—Made Simple (PowerPoint slides)
John M. White
Presentation Material
- Alice Developments: 2018-2022 - Sorting Through the Software Patents Morass
Michael J. Gulliford - Patent Subject Matter Eligibility of Biopharmaceutical and Diagnostic Inventions
Benjamin C.. Hsing - Novelty Under the AIA: Recent Developments and Best Practices
Sasha G. Rao - Obviousness in Prosecution: Tools You Can Use
Rebecca Goldman Rudich - 35 U.S.C. 112 – Decisions on Disclosure and Claiming
Chad M. Rink - Patent Subject Matter Eligibility of Biopharmaceutical and Diagnostic Inventions
John M. White
Why You Should Attend
The 35 USC 101 conundrum has become an enigma! What was merely complex or difficult has now become inscrutable. It seems to be case-to-case, examiner-to-examiner, topic-to-topic, and no legislative or Supreme Court help is on the horizon. This program will provide insight from both the PTO and caselaw. The 101-eligibility issue is one that has a long echo. What is the current state of PTO policy and CAFC decision-making and where will we collectively be in the years and decades ahead — during the enforcement period of patents now prosecuted and acquired? Gain some understanding and insight from our presenters.
Prior art (102) (pre and post-AIA) and obviousness (103) are covered inside and outside the USPTO. Obtain an understanding of recent interpretations, along with some perspective on the future of both. Will the Helsinn aftershock obtain any legislative interest?
What You Will Learn
After completing this program, participants will be able to:
- Gain insights on Section 101: what to do?
- Understand 102 and its dates: is the “grace period” real?
- Learn about the “effective filing date” across the globe
- Analyzing 102—pre and post-AIA
- Receive a comprehensive review of post-KSR 103 via CAFC and PTAB precedent
- Learn how to get benefit claims right on the first pass and/or fixing them rapidly! The prior art date of an “effectively filed” reference and the “effective filing date” on the application being examined
Who Should Attend
This program is geared to patent lawyers/agents who have a daily familiarity with existing 35 USC 101/102/103 in either a litigation or patent prosecution context or both. 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.
Program Level: Intermediate
Prerequisites: None
Advanced Preparation: None