Patent Bar Exam Prior Art Search 4

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?

Accepted Answer

The reference must disclose each and every element of the claim, arranged as in the claim

Answer

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:

Accepted Answer

Filing date (or earliest claimed priority date)

Answer

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:

Accepted Answer

There is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application

Answer

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?

Accepted 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

Answer

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?

Accepted Answer

A European patent application published with a search report

Answer

An EP A1 document is a European patent application published together with the European search report, while A2 is published without the search report.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Prior Art Search 4