Priority Law Course: Patent Law CLE: Lawyer Continuing Legal Education
Note: Although the course videos reference a book as written material support, you do not have to answer any assignments from the book to obtain lawyer CLE credit. You need only watch the videos and enter a code displayed in the video for each CLE credit hour.
The following text is a rough transcription of the audio from the above video about patent law CLE. The above video is taken inside the Priority Law Course. It shows the course contents once you register and enroll. The first 5 minute video, at the top of the course page, teaches you how to identify the verification code in each hour long video and verify that you have watched each hour. Verification is one of the requirements for continuing legal education (CLE) in most states. You will enter the verification codes for each hour and obtain your certificate once you’ve completed the course.
There is a feedback survey so you can give feedback about the course and there is a “contact us” function available if you have any questions. The course covers priority law as discussed below including legal process design. Most courses also include ethics materials and the length and subject matter covered will vary based upon the requirements of a particular state.
Legal Process Design: Patent Invalidity and Infringement Analysis
The video then reviews the Priority Law Course which is the first of four courses taught in a book called Legal Process Design: Patent Invalidity and Infringement Analysis. Legal Process Design is defined as the intelligent orchestration of resources to produce well defined high quality deliverables according to repeatable, trainable, measurable and scalable processes.
The introduction starts with a discussion of the qualifications of the author, the intended lawyer audience, and how to use business design to eliminate risk. The introduction gives an example of how legal process design is different from the more common law practice. The introduction then provides an overview of the structure of the book as shown in this figure which is the written support materials for the patent law CLE credits.
Patent Law CLE: Priority Law, Specification Maps, Reference Charts, Infringement Charts
The book starts with priority law course 100, the subject of this course. The book then teaches patent invalidity analysis 200, followed by the patent infringement analysis 300. Invalidity analysis includes the specification chart process course 220 and the reference chart process course 260. These are fundamental topics for any course in patent law CLE. The two search processes (240, 320) are not covered in the book because they are more technical in nature and not eligible for lawyer CLE. Click any of these diagrams if you would like to enlarge them.
Again, this course is the priority law course, and the others are described in more detail at the above courses link.
Each course includes the process documents including the law checklists, the process steps, quality metrics, deliverable tables and templates, and project plans. These are fully designed, functional processes that have been designed to develop work product. It is not just a analysis of law but it is a law in practice course.
The introduction includes an explanation of what each process means and when it is typically used in practice. There is a business context of when each of these processes is used to help in-house counsel or outside counsel make decisions. So the introduction gives a nice background set to motivate the desire to learn these processes.
After the introduction, the book then transitions to section I, the priority law process course. In terms of levels of detail, the CLE videos in each course cover the book at a higher level of abstraction, but the written materials for the priority law course are there if you want to drill down into the details, or use the process to scale a team. This promotional video is just intended to give you an idea of what information is covered in the patent law CLE videos for the priority law course. There is not enough time in this 36 minute video to watch all videos in this course. It is just an overview.
Pareto Analysis and Law: 80-20 Rule: Legal Process Design
These processes do not teach everything relevant to these particular areas of law. That requires a life of study and a life of continued study as the law changes. For that level of patent law knowledge, you use tools like Chisum, Westlaw, and Lexis. Instead, these processes represent an abbreviated set of issues assembled using pareto analysis. In pareto analysis, also called the 80-20 rule, you select the 20% of issues expected to come up over a defined set of case that generate 80% of the benefits available to your client. That is why you need an expert patent lawyer overseeing the process. The expert needs to monitor the process and issue spot the other 80% of the issues that provide the final 20% of benefits available to the client. Although not discussed in the book, it would be interesting to have a statistical analysis of federal case law, to determine the frequency of legal issues that come up over a statistically significant number of cases.
We will first show you the process documents and then discuss each chapter of teh priority law course.
Priority Law Process Documents
The priority law course includes a list of documents that are used to perform the priority law process. There are about 67 pages in the below designed process documents but only a portion of each document is shown below, typically only a portion of the first page. After you study the below discussed chapters 1-16, you will understand how to use these process documents. The below process documents are the legal process design. However, the chapters discussed below are needed to teach and scale a team who are going to perform the process.
Law-as-Process: Legal Issue Flow
The Priority Law Issue Flow Chart below includes a definition of each below issue that is available simply by clicking the hyperlinks shown. When you click the hyperlink, they take you to the process documents which include the issues and links to support or understand each issue. For each below issue, if you answer yes, the issue flows along the green arrow. If you answer no, the issue flows along the red arrow. Click any of these diagrams if you would like to enlarge them.
Dis-positive Legal Issue Focused
Is this patent valid? The below issue checklist discusses which issues are dispositive in litigation and provides links to supporting case law. Only a portion of the first page of each process document is shown below. The entire course and process documents will be available to you once you register and enroll.
Does the Pre-AIA or AIA Law Apply?
Is this patent or application treated under the pre-AIA or the AIA law?
Pre-AIA §102(a) Checklist
The process design includes issue checklists for each of the issues developed using the 80-20 rule. This is the top of the pre-AIA §102(a) Checklist. Each word of the statute includes a hyperlink that explains the meaning of that term, along with issues that arise in the case law.
Pre-AIA §102(b) Checklist
This is the top of the pre-AIA §102(b) Checklist. Each word of the statute includes a hyperlink that explains the meaning of that term.
Pre-AIA §102(e) Checklist
This is the top of the pre-AIA §102(e) Checklist.
Lettered MPEP 706.02(f)(1) Flow Chart I
As previously discussed, the priority law process design includes the flow charts from MPEP 706.02(f)(1). The nodes are lettered so the supervisory lawyer can verify that you ended up not just with the right date, but also in the correct section of law.
Lettered MPEP 706.02(f)(1) Flow Chart II-PCT Publications
Patent Priority Law (35 U.S.C.)
There is an additional set of priority laws that seemed to be necessary from pareto analysis.
The process documents include the meta data for understanding the representation of targets and references.
Shield Tables:
Sword Tables:
Invaidity Tables:
The pre-AIA 102 Cheat Sheet:
Commonly Owned/Joint Research Agreements: AIA and Pre-AIA Law:
The commonly ownership flowchart unifies AIA and pre-AIA law of common ownership. All of the hyperlinks are clickable to help the reader answer each question in the flowchart. Click any of these diagrams if you would like to enlarge them.
AIA 35 U.S.C. §102 Flow Chart
The AIA 35 U.S.C. §102 Flow Chart includes the exceptions and clickable links to help the reader understand how to answer each issue as they flow through the chart.
Next we describe what is in each chapter of the book and how they teach the above process documents.
The Patent Lifecycle: 35 U.S.C., CFRs, MPEP
Chapter 1 of the Priority Law Course discusses a general overview of the patent life cycle and it it takes you through the life of an in-house lawyer who is making decisions about when to file patent applications and in what part of the world to seek patents. Lawyers new to patent law and process will find Chapter 1 useful because it provides an end to end introduction to what is in the mind of a lawyer as they make business decisions.
The book’s introduction starts with the constitutional basis of patent law, Art. 1, Sec. 8, along with the statutory basis of patent law, 35 U.S.C., such as patent term §154, injunction and reasonable royalties §283-284, infringement §271, the one year grace period §102, subject matter eligibility §101, first-to-invent versus first-to-file §102, strict secrecy requirements for the prefiling period in most foreign jurisdictions, the types of patent applications available such as nonprovisional applications §111, national stage entry of PCT applications §371, provisional patent applications §111(b), the right of priority versus the benefit of the filing date, the Hilmer Doctrine, pre-AIA and AIA prior art treatment, written description and enablement §112, minimum requirements for an application for patent §111, continuity of disclosure, well formed benefit claims to earlier filed family members §120, right of priority §119, PCT and Paris Convention, patent ownership and assignment §261, licensing and enforcement, federal court and the ITC, injunction §281, and the territorial scope of patent law.
Remember, this book is intended to show you an example legal process design. So the examples are intended to cover everything a new lawyer on your team would need to learn to perform these four designed processes–priority law, specification charts, prior art reference charts, and infringement evidence charts. Not all team members will need all of this information in Chapter 1, but to be complete, the process design requires it. Again, this course covers only the priority law section of the book.
Chapter 2: Pre-AIA §102(a)
Chapter 2 begins by discussing how priority law is the context or rule set used to perform the other three processes discussed in the book. It describes how to set the pre-AIA search dates based on the earliest effective filing date with respect to pre-AIA §102(b) or the invention day with respect to pre-AIA §102(a) and §102(e). There is a visualization of pre-AIA §102(a), and later in the course we cover the AIA. As you can see in the diagram (see video), your day of invention is the date you can shield back to for prior art purposes and the little bubble in the vector represents the general concept that the prior art must come before the day of invention under pre-AIA 102(a) and (e). There is also a visualization of when activities performing the claim language transition from being prior art to being evidence of infringement, depending on when they commence. Although you need only review the videos and enter the verification codes for CLE purposes, each chapter concludes with questions in order to determine if someone studying the book and process is assimilating the knowledge.
Chapter 3: Pre-AIA or AIA Law?
Chapter 3 teaches how to determine whether the AIA or the pre-AIA law applies to a particular application in question. The statutory basis for this question is provided along with many examples of transitional applications that are treated one way or another. Chapter 3 begins to formalize the data structures used throughout the book to hold data gathered when studying a file, such as filing dates, publication dates, issue dates, claim support dates in parent applications, if any, claim support dates in continuation-in-part (CIP) applications, along with application codes indicating whether an application is a provisional, nonprovisional, CIP, patent cooperation treaty application (PCT), or foreign. The chapter proceeds through examples so the reader learns whether an application is treated under the pre-AIA or the AIA version of 35 U.S.C. §102. The lawyer is free to complete the questions in the book but is not required to do so to receive CLE credit in the course.
A methodology is introduced for representing a patent family under study, including non-provisional original applications, continuation applications, divisional applications, CIP applications, with vectors representing direct priority claims to earlier family members. There is also claim support metadata representing which claims are supported in earlier filed family members, which is relevant to determining continuity of disclosure and determining an earliest effective filing date for each claim in the target (patent) being studied. Once the law and data structures are developed, the chapter ends with setting search dates in order to verify whether or not the reader understands when to apply the pre-AIA or AIA version of 35 U.S.C. §102.
Chapter 4: Search Date Tables
Chapter 4 develops the understanding of pre-AIA §102(a) and provides a visualization. Of course this is an oversimplification and nuances are developed further in the course.
Chapter 4 then teaches how to set search dates for each claim in a patent under pre-AIA §102(a) along with how to populate search date tables.
All chapters verify that the reader understands the concepts covered by providing many questions at the end of each chapter. State CLE requirements typically only require watching videos and entering verification codes. The questions are there for those who want to study the concepts in depth and verify their knowledge or develop a team using the process.
Chapter 5: Search Dates and Pre-AIA §102(b)
Chapter 5 covers pre-AIA §102(b) and there is a visualization showing the moment in time activity transitions from being prior art to being infringement. Of course this is an oversimplification and nuances are developed further in the course.
Chapter 5 explains the pre-AIA §102(b) statutory bar and explains the earliest effective filing date (EEFD) and how prior art must be more than a year before the EEFD. There are more examples and questions on setting the search dates for each claim in the search dates table.
Chapters 6, 7, 8: Search Dates and Pre-AIA §102(e): MPEP 706.02(f)(1) Flow Charts
Chapters 6, 7 and 8 are spent developing understanding of pre-AIA §102(e). Chapter 6 explains the basics and includes a visualization of pre-AIA §102(e) and the right to shield prior art attacks back to the day of invention for each claim. How to determine the day of invention is discussed below in the process documents. Of course this is an oversimplification and nuances are developed further in the course.
Chapter 6 further explains that there are two versions of pre-AIA §102(e) and includes links to the statutory and regulatory basis supporting the discussion. MPEP 706.02(f)(1). There are more examples and questions on setting the search dates for each claim in the search dates table.
Chapters 7 and 8 include several videos explaining the nuances of the nine examples covered in MPEP 706.02(f)(1) and how to traverse the flow charts contained therein.
The above letters for each node in the pre-AIA §102(e) flow charts are used to prove to the supervisory lawyer that you have correctly traversed the flow charts. Those letters are populated in the sword tables shown later in the course. It is important to not only understand what the effective date of a reference is for sword purposes, but also prove that you found the correct law to set that effective date.
Chapter 9: Swords, Sheilds, and the Hilmer Doctrine
Chapter 9 introduces the concept of swords and shields in US patent law. It is first covered generally in the discussion accompanying the following diagram, and then discussed in nuance with examples.
Of course, this is only the big picture and the course develops many other issues and exceptions to these main ideas.
Chapters 10, 11: Claim Shield Tables, Reference Sword Tables, Cheat Sheets
Chapter 10 introduces more nuances to the shield and invalidity tables (not shown) which are used to report critical dates to supervisory lawyers.
Chapter 11 introduces the sword tables and cheat sheets (not shown) for pre-AIA §102. As supervisory lawyers, we often have time to sit at our desk and ponder legal issues. But down in the trenches, when prior art and infringement timing decisions are being made on a moment-to-moment basis, these concepts need to be drilled into the practitioner’s mind and useful tools such as cheat-sheets and visualizations should be at their finger-tips.
Chapter 12: Continuity of Disclosure, Incorporation By Reference
Chapter 12 discusses continuity of disclosure and incorporation by reference. For example, the course introduces the case law about how lapse in disclosure in the parent application that is present in the grandparent, may result in the grandparent being invalidating prior art under 102(b) to its own grandchild. This motivates understanding of the importance of continuity of disclosure and why it must be verified and not assumed. Chapter 12 also adds the leaf nodes to the sword table which tells the supervisory lawyer that the reader knows how to traverse the MPEP 706.02(f)(1) flow charts. The letters adjacent to sword effective dates below (e.g., I, I, Y, L, L, T) indicate which node of the pre-AIA 102(e) trees a reference corresponds. Click any of these diagrams if you would like to enlarge them.
Chapter 13: Accessibility of Unpublished Applications, Presumption of Validity
Chapter 13 discusses the accessibility of unpublished applications and adds more issues developed from the supplemental reading, such as presumption of validity, broken continuity of disclosure, incorporation by reference in entirety, along with a host of other issues.
Chapter 14: Common Ownership/Joint Research Agreements Flow Charts
Chapter 14 discusses pre-AIA 103(a) and (c) and what references are not allowed as prior art due to considerations of common ownership and joint research agreements. There is common ownership flow chart shown below in the process documents.
Chapter 15: Introducing AIA §102(a)(1) and (a)(2)
Chapter 15 introduces AIA §102 including a visualization for AIA §102(a)(1) and (a)(2).
Chapter 15 goes on to introduce the statutory language of the exceptions to AIA §102(a)(1) and (a)(2). Although only the verification codes from the videos are required to obtain CLE credit, all chapters include questions that verify whether or not the reader understands the main ideas covered.
Chapter 16: Visualizations of AIA §102(a)(1) and (a)(2) and Exceptions
Chapter 16 includes visualizations of AIA §102 and their exceptions.
Click any of these diagrams if you would like to enlarge them.
The chapter also includes examples of each exception to familiarize the reader with what each exception looks like so you can recognize it during a search. Further, the chapter also introduces meta data into the data structures that include an indication of claims canceled in prosecution (necessary to making the pre-AIA or AIA determination), along with assignment dates, inventorship, authorship, and source data (when authors and inventors obtain information from other sources) to help identify when one of exception applies.
As always, there are many examples to help the reader identify when exceptions apply.
Feel free to watch the first hour of The Priority Law Course, which follows: