PPC Research Methods & Evidence-Based Practice 3 — Questions and Answers
Question 1: Which legal research platform is most widely used by patent practitioners to retrieve U.S. Federal Circuit and PTAB decisions?
- Avvo
- Westlaw or LexisNexis (Correct answer)
- PACER only
- USPTO TSDR
Correct answer: Westlaw or LexisNexis
Westlaw and LexisNexis both provide comprehensive access to Federal Circuit opinions and PTAB decisions with advanced search and citator tools.
Question 2: A paralegal needs to verify whether a patent case citation is still good law. Which tool should they use?
- Google Scholar alerts
- KeyCite (Westlaw) or Shepard's (LexisNexis) (Correct answer)
- PatFT full-text search
- USPTO PAIR status check
Correct answer: KeyCite (Westlaw) or Shepard's (LexisNexis)
KeyCite and Shepard's are citator services that show whether a case has been affirmed, reversed, overruled, or distinguished by later decisions.
Question 3: Under 35 U.S.C. §103, prior art combined from multiple references can be used to reject a claim as obvious. What legal standard governs this analysis?
- The doctrine of equivalents
- The Graham v. John Deere four-factor test (Correct answer)
- The Alice/Mayo framework
- The Festo presumption
Correct answer: The Graham v. John Deere four-factor test
Graham v. John Deere established the framework for obviousness: scope/content of prior art, differences from claimed invention, level of ordinary skill, and secondary considerations.
Question 4: When researching PTAB Inter Partes Review (IPR) proceedings, which database provides official trial documents and final written decisions?
- Derwent Innovation
- PTAB E2E (End-to-End) system (Correct answer)
- USPTO PatFT
- EspaceNet
Correct answer: PTAB E2E (End-to-End) system
PTAB E2E is the USPTO's official system for filing and accessing all IPR, PGR, and CBM trial documents including petitions and final written decisions.
Question 5: A paralegal discovers a potentially invalidating reference but is unsure of its public availability date. What is the best practice?
- Discard the reference if no date is visible
- Investigate archive sources such as the Wayback Machine, library records, or publisher metadata to establish the date (Correct answer)
- Assume it predates the priority date and include it anyway
- Use the reference only if it has a DOI number
Correct answer: Investigate archive sources such as the Wayback Machine, library records, or publisher metadata to establish the date
Establishing the publication or public availability date of a reference is critical; sources like the Internet Archive, library catalogs, and publisher records can confirm the date.
Question 6: Which doctrine holds that statements made during patent prosecution can limit the scope of patent claims in subsequent litigation?
- The doctrine of laches
- Prosecution history estoppel (Correct answer)
- The experimental use exception
- The doctrine of exhaustion
Correct answer: Prosecution history estoppel
Prosecution history estoppel prevents a patentee from recapturing through the doctrine of equivalents subject matter surrendered during prosecution.
Question 7: When preparing a validity opinion, a paralegal organizes prior art references by relevance. Which category of prior art is typically considered most relevant to claim 1?
- References that describe tangentially related technologies
- References that disclose every limitation of the independent claim (Correct answer)
- References cited by the applicant during prosecution
- References from non-English sources
Correct answer: References that disclose every limitation of the independent claim
A reference disclosing all limitations of an independent claim is potentially anticipatory under §102 and thus most relevant to validity analysis.
PPC Research Methods & Evidence-Based Practice 3
Which legal research platform is most widely used by patent practitioners to retrieve U.S.
Federal Circuit and PTAB decisions?