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

Recording of a 150-minute CLE webinar with Q&A

Conducted on Thursday, June 29, 2017
Recorded event now available

This CLE webinar will examine AIA Section 102 prior art and the AIA exceptions. We will offer best practices for identifying applicable prior art when filing or challenging patent applications, and making the correct choice of law for prosecuting.


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 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, 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. Because these types of patents are seen in district court litigation, some judicial interpretation is available on 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 in patent applications. The panel will offer best practices for identifying applicable prior art when filing or challenging patent applications, i.e., making the 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 and dealing with prior art


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?


Doris Johnson Hines, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Ms. Hines focuses her practice on patent litigation and has led teams in U.S. district courts, the U.S. International Trade Commission, and before arbitration panels. She has argued a number of cases before the U.S. Court of Appeals for the Federal Circuit. She regularly represents clients in mediations and assists in licensing negotiations. She advises clients on strategic patent prosecution, monetization strategies for issued patents, and patent damages, including issues relating to standard essential patents and fair, reasonable, and non-discriminatory (FRAND) terms.

Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.


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Patent Law Advisory Board

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

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Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


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David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



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