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.
Patent Bar Exam Prior Art Search 4
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?