Section 102 and Prior Art: Navigating the Expanded Scope of Prior Art and AIA Exceptions
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will examine AIA Section 102 prior art and the AIA exceptions. We will offer best practices for identifying relevant prior art when filing or challenging patent applications and making the correct choice of law for prosecuting.
Outline
- Section 102 under the AIA
- Definition of prior art
- "Secret" prior art
- Effectively filed requirements
- Interplay with pre-AIA applications
- FITF USPTO examination guidelines
- Choice of law issues
- Recent AIA 102 decisions
- District court and Federal Circuit AIA 102 decisions
- 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
Robert M. Hansen
Partner
The Marbury Law Group
Hansen was a founding partner of Hansen Huang Technology Group, LLP which merged with Roberts Mardula &... | Read More
Hansen was a founding partner of Hansen Huang Technology Group, LLP which merged with Roberts Mardula & Wertheim, LLC to form The Marbury Law Group. Mr. Hansen has extensive experience in all aspects of intellectual property law, including patent preparation and prosecution; patentability, validity, and infringement opinions; sale and licensing of intellectual property; strategic patent portfolio development; and litigation. Mr. Hansen has particular patent technical expertise in computer software, electronic devices and systems, medical devices and systems, telecommunications, energy systems, and mechanical systems. He also practices in the areas of trademarks, copyrights, business start-up counseling, business contracts and mergers & acquisitions. Mr. Hansen previously practiced law with two nationwide law firms, focused on patent prosecution, litigation, client counseling, licensing, and procurement. He is also a frequent volunteer at the Mason Enterprise Center, which is the Small Business Development Center (SBDC) for Virginia’s Fairfax and Loudon Counties, in which he provides business, M&A, and legal counseling to small businesses and entrepreneurs.
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Thomas L. Irving
Partner
The Marbury Law Group
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 47 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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Kassandra M. Officer
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner
Ms. Officer focuses on patent and trade secret litigation before U.S. district courts as well as on post-grant... | Read More
Ms. Officer focuses on patent and trade secret litigation before U.S. district courts as well as on post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Her practice encompasses a range of technologies, with an emphasis on chemicals, pharmaceuticals, and medical devices. Ms. Officer represents pharmaceutical patent holders in litigations arising under the Hatch-Waxman Act as well as parties in trade secret misappropriation actions. Her experience covers all aspects of trial preparation, including conducting offensive and defensive discovery; taking and defending fact and expert depositions; managing day-to-day litigation activities; preparing for and going to trial; and drafting post-trial briefing. Ms. Officer also counsels clients regarding quarantine and clean-room redesign procedures. She represents clients in inter partes review (IPR) and other contested proceedings before the PTAB. Ms. Officer's experience includes developing validity positions, drafting written submissions, and preparing technical expert witnesses. She has an active patent prosecution and counseling practice, preparing and prosecuting U.S. patent applications on behalf of international clients, with a focus on chemical subject matter, including pharmaceutical and veterinary drug products.
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M. David Weingarten, Ph.D.
Partner
Finnegan Henderson Farabow Garrett & Dunner
Dr. Weingarten has a diverse intellectual property practice focusing on patent litigation before U.S. district courts... | Read More
Dr. Weingarten has a diverse intellectual property practice focusing on patent litigation before U.S. district courts and the U.S. International Trade Commission (ITC), post-grant trial proceedings at the U.S. Patent and Trademark Office (USPTO), prosecution, and strategic portfolio management. He also drafts opinions on patent infringement, validity, and enforceability, and prepares intellectual property agreements, such as those relating to license and supply. In addition, he prepares and prosecutes U.S. patent applications on behalf of domestic and foreign clients.
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