First to File: Final Rules and Guidance

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

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

Conducted on Wednesday, February 20, 2013
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 explain what constitutes prior art and outline considerations for the new derivation practice.


The Leahy-Smith America Invents Act (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 Mar. 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. The USPTO is required by statute to issue its final rules and guidance by Feb. 16, 2013.

To effectively advise clients on meeting the new requirements and protecting their IP rights, counsel to IP owners and inventors must understand the many changes that are coming as the first-inventor-to-file system goes into effect.

Listen as our authoritative panel of patent attorneys examines the first-to-file provisions, including the USPTO final rules and what constitutes prior art under the new patent reform law. The panel will offer best practices for patent practice under the new system.


  1. First-to-file provisions
    1. What changes
    2. What stays the same
    3. Derivation practice
  2. The USPTO final rules and guidance
  3. Examples of how new Section 102 works under the AIA


The panel will review these and other key questions:

  • How do the USPTO final rules differ from the proposed rules?
  • What constitutes prior art under the new first-to-file system?
  • How will the new first-to-file system under Section 102 work under the AIA?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


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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Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


Fulbright & Jaworski

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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