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

Please note: this webinar is 2.5 hours

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


Conducted on Thursday, June 29, 2017

Recorded event now available

or call 1-800-926-7926
Program Materials

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.

Description

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.

READ MORE

Outline

  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

Benefits

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?

Faculty

Hines, Doris
Doris Johnson Hines

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Hines focuses her practice on patent litigation and has led teams in U.S. district courts, the U.S. International...  |  Read More

Irving, Thomas
Thomas L. Irving

Partner
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

Other Formats
— Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include program handouts. To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

$447

Download

$447