Prior Art & Obviousness 2009: The PTO and CAFC Perspective on Patent Law Sections 102 & 103

 September 1, 2009 - September 1, 2009


Location


PLI California Center
San Francisco, California
USA

Description


35 USC 102 (Prior Art) continues to be re-understood and re-interpreted by the PTO and CAFC to account for the unforeseen in how the concept of "prior art" and circumstance collide in the 21st century.  Prior Art on the web - here today, gone tomorrow, but always recoverable - maybe; on sale, or "ready for patenting" in the age of biotech and nanotech, what is truly enabled?  For every Practitioner, it is a necessity to stay current on the touchstone of patentability: 35 USC 102. 

And, let's not overlook the most common reason any application is rejected or patent held invalid: 35 USC 103, Obviousness. The Pandora's box of KSR or "what in the world were they thinking when they wrote that opinion" will be explored from inside and outside the PTO. Are the KSR effects uniform, or do they vary subject to subject in the PTO and Courthouse?

The first 2 hours of the course are devoted to the PTO view of 102 and 103, i.e., what Examiners are using and relying on in examination and found in the most current edition of the MPEP. The remainder of the program is devoted to recent case law decided by the CAFC and Supreme Court as it relates to each segment of 102 and 103. The final hour is spent on 102(e).  

Patent practitioners are obliged to live with Section 102 because it just “is.” The language in the respective
Sections (a)-(g) seems to bump into itself and can almost never be simply read and applied quickly and easily. For
those wanting to have a working understanding of Section 102, including recent re-interpretations, you must attend
this program. Then, you will become the “go to” office resource for PTO and litigation analysis of Section 102 issues.
  • When is a patent a “patent” under the statute?
  • Public accessibility - on the web, on the shelf, in the mail, “routine” practices
  • Four steps to the abyss of (d)
  • Ex parte 102(g); abandon, suppress, conceal
  • Actual vs. constructive reduction to practice (where (e) trumps (g))
  • What have they done to 102(e)?
  • The issues raised by successive common owner filings
  • A walk through the “guidelines” and “timelines”
  • Impact of proper/improper benefit claims on: a) prior art date of a reference, and b) effective filing date of the application being examined
Everyone thought they knew how to apply 35 USC 103. Start with Graham v. John Deere, add a pinch of teaching/suggestion/motivation, and finish with secondary considerations. Well…not anymore. It is a new day; KSR is plowing through the PTO, District Courts, and CAFC. You need to know what’s happening subject by subject.

Organized by


Practising Law Institute
810 Seventh Avenue
New York, New York
USA

Contact


Phone: (800)260-4PLI
Email: info@pli.edu

Event's Website


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