Patent Bar Exam Prior Art Search 4 — Questions and Answers
Question 1: A practitioner performs a prior art search and finds a U.S. patent with a claim that, when read under the broadest reasonable interpretation, appears to anticipate the client's claim. Under the anticipation standard, what must be true about the prior art reference?
- The reference must disclose each claim element in separate paragraphs
- The reference must disclose each and every element of the claim, arranged as in the claim (Correct answer)
- The reference must be from the same technology field as the invention
- The reference must have been published within ten years of the filing date
Correct answer: The reference must disclose each and every element of the claim, arranged as in the claim
Anticipation under § 102 requires that a single prior art reference disclose each and every element of the claimed invention, arranged as in the claim.
Question 2: A practitioner discovers that a key prior art reference is a U.S. patent application that was filed before the client's effective filing date but published after it. Under AIA § 102(a)(2), this application is prior art as of its:
- Publication date
- Filing date (or earliest claimed priority date) (Correct answer)
- Date of allowance
- Date of issuance as a patent
Correct answer: Filing date (or earliest claimed priority date)
Under AIA § 102(a)(2), a U.S. patent application that later publishes or patents is prior art as of its actual filing date or the earliest effective filing date of the application.
Question 3: The MPEP requires applicants to disclose information material to patentability in an Information Disclosure Statement (IDS). Under 37 C.F.R. § 1.56, information is 'material' if:
- It was identified during the applicant's own prior art search
- There is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application (Correct answer)
- It anticipates at least one claim of the application
- It was cited in a related foreign prosecution
Correct answer: There is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application
Under 37 C.F.R. § 1.56, information is material to patentability if there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application.
Question 4: During a prior art search, a practitioner finds a journal article describing an invention identical to the client's, published 6 months before the client's filing date. The client states the article describes the client's own earlier public presentation. What should the practitioner advise?
- The article is not prior art and need not be disclosed because it originated from the client
- The article may be excepted under AIA § 102(b)(1)(A) if disclosure originated from the inventor, but must still be submitted in an IDS (Correct answer)
- The article is not prior art and the client has an unlimited grace period for self-disclosures
- The article creates an absolute bar and the application should be abandoned
Correct answer: The article may be excepted under AIA § 102(b)(1)(A) if disclosure originated from the inventor, but must still be submitted in an IDS
Even if the disclosure qualifies for the § 102(b)(1)(A) inventor-disclosure exception, it remains material information that must be disclosed to the USPTO in an IDS under the duty of candor.
Question 5: A practitioner searches Espacenet to find European patent publications relevant to a U.S. application. A relevant EP document is found but only as an 'A1' publication. What does the 'A1' kind code signify?
- A granted European patent with an opposition period
- A European patent application published with a search report (Correct answer)
- A European patent application published without a search report
- A corrected version of a granted European patent
Correct answer: A European patent application published with a search report
An EP A1 document is a European patent application published together with the European search report, while A2 is published without the search report.
Question 6: In a § 103 obviousness analysis following Graham v. John Deere, which of the following represents the correct sequence for the factual inquiries?
- Level of skill → scope of prior art → differences from prior art → secondary considerations
- Scope and content of prior art → differences between prior art and claims → level of ordinary skill → secondary considerations (Correct answer)
- Differences from prior art → secondary considerations → scope of prior art → level of skill
- Secondary considerations → scope of prior art → differences → level of skill
Correct answer: Scope and content of prior art → differences between prior art and claims → level of ordinary skill → secondary considerations
Graham v. John Deere established four factual inquiries in order: (1) scope and content of prior art, (2) differences between prior art and claims, (3) level of ordinary skill, and (4) secondary considerations.
Question 7: An applicant wants to search for prior art in the Derwent Innovation database. What is the primary advantage of Derwent over USPTO PatFT for prior art searches?
- Derwent contains only U.S. patents, making domestic searches more efficient
- Derwent provides enhanced abstracts, family groupings, and worldwide patent coverage including non-English documents (Correct answer)
- Derwent is freely accessible to all practitioners without a subscription
- Derwent indexes only peer-reviewed journal articles alongside patents
Correct answer: Derwent provides enhanced abstracts, family groupings, and worldwide patent coverage including non-English documents
Derwent Innovation offers value-added abstracts written in consistent English, patent family groupings across jurisdictions, and worldwide coverage, making it more comprehensive than USPTO PatFT for global prior art searches.
