Patent Reform: First to File Provisions

Navigating Significant Changes to What Constitutes Prior Art, Derivation Practice and More

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

Conducted on Tuesday, November 15, 2011
Recorded event now available

This CLE webinar will provide guidance for counsel to IP owners and inventors on the first-to-file system under the new America Invents Law. The panel will review what constitutes prior art and the new derivation practice.


On Sept. 8, 2011, Congress finalized its six-year effort to reform the U.S. Patent Law System by passing the Leahy-Smith America Invents Act (AIA). The AIA represents the most significant change to the U.S. Patent Law System in decades.

Perhaps the biggest change is the move from the current first-to-invent system to the first-to-file system, starting on March 16, 2013. Among the important changes under the new system are the expansion of what constitutes prior art and the elimination of the interference practice.

Counsel to IP owners and inventors must carefully examine and understand the many changes that are coming as patent reform goes into effect in order to advise clients on meeting the new requirements and protecting their IP rights.

Listen as our authoritative panel of patent attorneys provides an overview of the America Invents Act and examines the first-to-file provisions, including what constitutes prior art under the new patent reform law. The panel will offer best practices for patent practice under the new system.


  1. America Invents Act
    1. Overview of changed landscape
    2. Effective dates for changes
  2. First inventor to file provisions
    1. What changes
    2. What stays the same
    3. Derivation practice
  3. Examples of how new section 102 works under the AIA


The panel will review these and other key questions:

  • What constitutes prior art under the new first-to-file system?
  • How does the derivation practice differ from interference practice?
  • How will the new first-to-file system under section 102 work under the AIA?


Stephen G. Kunin, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

He represents clients in post-grant patent proceedings at the U.S. Patent and Trademark Office. He also serves as an expert witness and consultant on patent policy, practice and procedure. During his tenure at the USPTO, he served in many executive positions, including as Deputy Commissioner for Patent Examination Policy.

Brad D. Pedersen, Partner
Patterson Thuente Christensen Pedersen, Minneapolis

He concentrates his practice in the areas of high-technology, computer, software and medical device patent prosecution strategy, licensing and litigation. Serving as counsel in court trials, interferences and reexaminations, and as an expert witness, he has extensive litigation experience, in addition to his experience in patent prosecution and transactional work.


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Customer Reviews

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray


Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

I thought the subject matter was handled very well!  I appreciated the panel’s interaction and their responses to the inquiries posed.

Patricia Stamler

Hertz Schram

I was pleased with the in-depth, comprehensive coverage of a fairly narrow but important set of issues.

Patricia L. Chapman

Gleaves Swearingen

The content was very helpful and the presenters clearly knew the subject matter inside and out.

Nicole Squires

Chapman and Cutler

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Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Bassam N. Ibrahim


Buchanan Ingersoll & Rooney

Mark P. Wine



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