Research Methods & Evidence-Based Practice Flashcards

In evidence-based patent practice, what is the primary purpose of maintaining a contemporaneous inventor notebook or lab record?

Answer: To establish evidence of conception and reduction to practice for potential priority disputes

Contemporaneous inventor records provide dated evidence of conception and reduction to practice, which can be critical in derivation proceedings or priority disputes.

A paralegal is asked to evaluate whether a technical expert's opinion meets the standard for admissibility in patent litigation. Which legal standard applies in federal court?

Answer: The Daubert standard under Federal Rule of Evidence 702

Under Daubert and FRE 702, expert testimony must be based on sufficient facts, reliable methodology, and properly applied principles to be admissible in federal patent litigation.

When compiling a prior art package for an IPR petition, which evidentiary standard governs whether cited references render claims unpatentable?

Answer: Preponderance of the evidence

PTAB applies a preponderance of the evidence standard in IPR proceedings, a lower threshold than the clear and convincing standard used in district court invalidity challenges.

A paralegal documents a research search log for a prior art investigation. Why is maintaining a detailed search log considered best practice?

Answer: It ensures reproducibility, supports duty of disclosure compliance, and provides a defensible record of thoroughness

A detailed search log demonstrates methodological rigor, supports the duty of candor before the USPTO, and creates a defensible record if the search's comprehensiveness is later challenged.

Which principle requires patent practitioners to disclose all known material prior art to the USPTO during prosecution?

Answer: The duty of candor and good faith under 37 C.F.R. § 1.56

37 C.F.R. § 1.56 imposes a duty on applicants, attorneys, and agents to disclose to the USPTO any known information material to patentability.

A paralegal is tasked with evaluating the reliability of a technical reference found online. Which factor is most critical in assessing its evidentiary value as prior art?

Answer: Whether the document was publicly accessible before the relevant priority date

Public accessibility prior to the priority date is the essential criterion for a reference to qualify as prior art under 35 U.S.C. § 102.

During litigation support, a paralegal identifies a key prior art reference not disclosed during prosecution. What is the immediate recommended action?

Answer: Promptly bring the reference to the supervising attorney's attention for evaluation under the duty of candor

Any potentially material prior art must be promptly escalated to the supervising attorney, who will assess obligations under 37 C.F.R. § 1.56 and litigation strategy.