Section 102 and Prior Art: Navigating the Expanded Scope of Prior Art and AIA Exceptions

Recording of a 90-minute CLE webinar with Q&A

Conducted on Thursday, December 17, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel regarding post-AIA Section 102 and prior art and offer best practices for utilizing prior art in patent applications.


The AIA significantly altered what constitutes available prior art that can be used to challenge patent claim validity/patentability or reject patent claims. Significantly, the AIA expanded the potential for prior art but contracted the universe of available prior art in certain instances.

Because of the long tail of pre-AIA patents and patent applications, counsel must continue to grasp pre-AIA rules as well as the post-AIA rules. In fact, a provisional application filed before the AIA’s first possible filing effective date (Mar. 16, 2013) followed up by a non-provisional application on, for example, Mar. 14, 2014, where all claims that issue still have an effective filing date before Mar. 16, 2013, is considered a pre-AIA patent for 20 years—or more if eligible for a term extension or adjustment.

Moreover, an application containing claims with an effective date before Mar. 16, 2013, and claims with an effective filing date after Mar. 15, 2013, will be subject to post-AIA Section 102 and pre-AIA Section 102(g) for all claims. We are starting to see the first of these types of patents in district court litigation, so we will hopefully soon have some judicial interpretation of post-AIA Section 102 and the important AIA transition provisions 3(n)(1) and 3(n)(2).

Patent counsel operating in the world of pre-AIA and post-AIA patentability requirements and prior art must understand the current state of the law and choice of law implications. This will impact prosecution, litigation and proceedings before the Patent Trial and Appeal Board (PTAB).

Listen as our authoritative panel of patent attorneys examines AIA Section 102 prior art and the AIA exceptions. The panel will offer best practices for identifying applicable prior art when filing or challenging patent applications, i.e., identifying correct choice of law.



  1. Section 102 under the AIA
    1. Definition of prior art
    2. “Secret” prior art
    3. Effectively filed requirements
    4. Interplay with pre-AIA applications
  2. FITF USPTO examination guidelines
  3. Choice of law issues
  4. Recent PTAB §102 decisions
  5. Recent Federal Circuit §102 decisions
  6. Best practices for identifying prior art and dealing therewith


The panel will review these and other key issues:

  • How did AIA expand the definition of prior art?
  • What are the Section 102 exceptions and what is the impact on Section 103 art?
  • How can counsel claim—or defend against—post-AIA patent applications asserting priority over pre-AIA applications?
  • What practices should patent counsel employ in order to utilize prior art?


Anthony D. Del Monaco
Anthony D. Del Monaco

Finnegan Henderson Farabow Garrett & Dunner

Mr. Del Monaco focuses his practice on patent litigation. His experience ranges from consulting with clients regarding...  |  Read More

Doris Johnson Hines
Doris Johnson Hines

Finnegan Henderson Farabow Garrett & Dunner

Ms. Hines focuses her practice on patent litigation and her experience spans a wide range of technologies, but has...  |  Read More

Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

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