Patent Bar Exam Prior Art Search 2 — Questions and Answers
Question 1: Under AIA 35 U.S.C. § 102(a)(1), a patent is not available if the claimed invention was described in a printed publication before the effective filing date. Which of the following best describes when a document qualifies as a 'printed publication'?
- Only documents physically printed and distributed in the United States
- Any document sufficiently accessible to the relevant public, regardless of format or location (Correct answer)
- Only documents indexed in a recognized patent database
- Documents published by recognized scientific journals with peer review
Correct answer: Any document sufficiently accessible to the relevant public, regardless of format or location
A 'printed publication' requires only that the document be sufficiently accessible to the relevant public, including online postings, conference papers, and foreign publications.
Question 2: An inventor publicly used an invention in the U.S. one year and two months before filing a patent application under post-AIA law. Which statutory bar applies?
- The invention is still patentable because the inventor herself made the public use
- The public use is prior art under § 102(a)(1) and the one-year grace period has expired, barring the patent (Correct answer)
- The public use is only prior art if witnessed by more than ten people
- Public use outside a commercial context never constitutes prior art
Correct answer: The public use is prior art under § 102(a)(1) and the one-year grace period has expired, barring the patent
Under AIA § 102(a)(1), a public use more than one year before the effective filing date bars patentability, even by the inventor herself.
Question 3: When conducting a prior art search, a patent practitioner finds a U.S. patent that issued after the application's filing date but has a filing date before it. Under AIA § 102(a)(2), this reference is prior art only if:
- The reference patent was granted before the search was conducted
- The reference patent was filed by a different inventive entity and not excluded by § 102(b)(2) (Correct answer)
- The reference patent claims the same invention
- The reference patent was filed in the same technology class
Correct answer: The reference patent was filed by a different inventive entity and not excluded by § 102(b)(2)
Under § 102(a)(2), a U.S. patent application filed before the effective filing date is prior art if it was filed by a different inventive entity and is not otherwise excluded under § 102(b)(2).
Question 4: A prior art search reveals a non-English foreign patent published two years before the U.S. application's filing date. How should this reference be treated under AIA § 102?
- It is prior art only if an English translation was published before the U.S. filing date
- It is prior art because § 102 does not require the reference to be in English (Correct answer)
- It is prior art only if it was cited by the foreign patent office
- It is not prior art because it was not published in the United States
Correct answer: It is prior art because § 102 does not require the reference to be in English
Under AIA § 102, foreign-language publications are prior art if they were publicly accessible before the effective filing date, regardless of translation status.
Question 5: Which USPTO database is specifically designed for searching U.S. patent full-text documents and allows Boolean keyword searching with field codes?
- PatSnap
- USPTO Patent Full-Text and Image Database (PatFT/AppFT) (Correct answer)
- Espacenet
- Google Scholar
Correct answer: USPTO Patent Full-Text and Image Database (PatFT/AppFT)
USPTO's PatFT (issued patents) and AppFT (published applications) databases support full-text Boolean searches using field codes such as ACLM, ABST, and TTL.
Question 6: During prosecution, the examiner cites a reference under § 102(a)(1) that was published 18 months before filing. The applicant argues the reference is not prior art because the disclosure originated from the inventor. What must the applicant submit to invoke the § 102(b)(1)(A) exception?
- A sworn declaration that the applicant invented first
- Evidence that the reference was made by the inventor or joint inventor, or by others who obtained the subject matter from the inventor (Correct answer)
- Proof that the reference was not indexed in major databases
- A petition showing the reference was published in error
Correct answer: Evidence that the reference was made by the inventor or joint inventor, or by others who obtained the subject matter from the inventor
§ 102(b)(1)(A) excepts disclosures made by or derived from the inventor, but the applicant must provide evidence establishing that the disclosure originated from the inventor.
Question 7: A practitioner is searching for prior art to an invention involving a novel chemical compound. Which search strategy is most appropriate to identify structurally similar compounds?
- Searching only U.S. patent classification codes for the compound's general use
- Performing a substructure or Markush structure search using chemical structure databases such as SciFinder or STN (Correct answer)
- Reviewing abstracts from published U.S. patents using keyword synonyms only
- Limiting the search to International Patent Classification subclass C07
Correct answer: Performing a substructure or Markush structure search using chemical structure databases such as SciFinder or STN
Chemical compound searches require substructure or Markush searches in specialized databases like SciFinder or STN to identify structurally similar compounds not captured by keyword searches.
Patent Bar Exam Prior Art Search 2
Under AIA 35 U.S.C. § 102(a)(1), a patent is not available if the claimed invention was described in a printed publication before the effective filing date.
Which of the following best describes when a document qualifies as a 'printed publication'?