June 22, 2023 Webinar CLE: Use of Applicant Admitted Prior Art in Post Grant Proceeding

Topic: Use of Applicant Admitted Prior Art in Post Grant Proceeding

“Applicant admitted prior art” arises from statements made by a patent applicant, such as in a patent’s specification or during prosecution, that identify the work of another as “prior art.” Those statements become admissions which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. § 102. The nature and use of applicant admitted prior art has been the topic of two memoranda issued by the Director of the Patent Office, and the Federal Circuit’s recent decision in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022). This CLE will discuss the guidance provided by these authorities, identify open issues related to applicant admitted prior art, and offer practical guidance regarding its use.

Speakers: Please join us as Jon Carter of Perkins Coie LLP (NYC) presents this CLE.

Jon is a Senior Counsel in Perkins Coie’s New York City office, practicing in the Patent Litigation group. Jon joined Perkins Coie in 2023 after 15 years in Kirkland & Ellis’s New York City office, first as an associate and then as a partner, where he represented clients in numerous courts and administrative venues and across a variety of industries, including wireless communications, computer architecture and software design, semiconductor fabrication, e-commerce, medical devices, and pharmaceuticals. Jon earned his B.S.E. in Biomedical Engineering and Electrical Engineering from Duke University and his J.D. from New York University School of Law. Before law school, Jon worked for IBM as a design and verification engineer in the STI Design Center in Austin, Texas.

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date: Thursday, June 22, 2023

Time: 12:00 pm – 1:00 pm

Where: ******Zoom Meeting******

Meeting Links Will Be Provided the Morning of the Event


The program is free but registration is required.

Click here to register via the Bar website.

(Note: Registration is limited, and participants must register by noon on Wednesday, June 21, 2023.)

*Please make sure to click “Register” then click on “View Cart” at the top right of your screen, then click “Checkout” in order to make sure your registration is complete. If you do not receive an automated email confirmation and receipt then you did not register correctly, contact the CLE service center for assistance.

*Waiver of the registration fee due to economic hardship is available; email the registration contact person indicated below.

**Law students: May attend for free depending on seat availability; email the registration contact person indicated below.

Cancellations and Refunds:

Full refunds will be granted for cancellations received by the OSB CLE Service Center by 5 p.m. on Wednesday, June 21, 2023. Please cancel using the Bar website and also email the CLE Organizer listed below to inform them of the cancellation.

CLE Schedule and Material:

Visit the IP Section’s website for upcoming CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

The organizer for this CLE is: Bryan Beel, Perkins Coie LLP

For registration questions please contact the OSB CLE Service Center at (503) 431-6413 or via email.