PLI Prior Art & Obviousness Conference

Practising Law Institute (PLI) will be holding a conference entitled: "Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103" on July 1, 2008 in New York, NY.  The conference will offer presentations on the following topics:

I.  Overview of Sections 102 and 103

A.  Section 102 and the MPEP, from (a) to (g) (or what isn't in the statute but is in the law?)

• "Public knowledge" vs. "public use," "in this country"
• When is a patent a "patent": (a) vs. (b) vs. (d)
• Availability on the "web," on the shelf, and routine practices
• The "invention" and "experimental use"
• Date of "invention"
• Abandonment under (c) and (g)
• The foreign origin C.I.P. trap; "claimed or could have claimed"
• Derivation: "authorship" vs. "inventorship"
• 102(g): Inter partes and ex parte and NAFTA/WTO

B.  Section 103 and the PTO KSR Guidelines

• From Jefferson to Graham v. John Deere: A brief history -- how we got here
• The CAFC (Patents-R-Us, the result-oriented court) -- how we got there
• KSR -- our just deserts; can we recover? The PTO Guidelines

II.  Section 102(a) - (d)

A.  102(a) and (b) and the CAFC 2008

• "Public" availability is the vanguard of (a) and (b)
• When is a patent a "patent" under the statute?
• Prior art date for "cancelled" subject matter
• Public accessibility -- on the Web, on the shelf, in the mail, "routine" practices
• Effects of "confidentiality"
• Third-party public use of inventor's own work
• "On sale" by whom and under what circumstances

B.  102(c) and (d): Abandonment and the "Four Steps"

• "Abandonment" and intent of the inventor
• Deliberate surrender of rights
• Four steps to the abyss of (d)
• Do the foreign and U.S. claims have to be the same for (d) to apply?
• The C.I.P. trap
• "Allowed applications" vs. "patents" under (d)

III.  102(f) and (g): Joint Ventures and Co-Development

• Derivation
• "Authorship" vs. "inventorship"
• Conception and communication to "another"
• Ex parte 102(g); abandon, suppress, conceal
• Actual vs. constructive reduction to practice (where (e) trumps (g))
• Diligence
• 102(f) and (g) under 103(c)

IV.  35 USC 103 and the CAFC

• KSR in 2008 in the District Courts
• KSR as implemented by the CAFC
• Where do we go from here?

V. 102(e) and the 9 Most Common Timelines: Effects of Priority Under 119, 120, 121, 365

• What have they done to 102(e)?
• The issues raised by successive common owner filings
• The published U.S. application
• The published international application
• The issued U.S. patent
• Priority under 119, 120, or 365
• A walkthrough of the "guidelines" and "timelines"
• Ethical requirements under 102(a) through (g)

A full program for the Prior Art & Obviousness 2008 conference can be found here.  The registration fee for the conference is $1,395.  Those interested in registering for the conference can do so here.