This chapter gives a basic overview
for patent examiners explaining how to conduct a prior art search. The prior art
section discusses some questionable reference types and whether or not they are
considered prior art. The reference types outlined here include; matter cancelled
in an application, copending abandoned applications and foreign patents.
This
section is not tested on the exam because it is primarily useful to examiners
and not the licensed patent practitioner. The following topics are the only areas
of this section that have been tested on the patent bar exam.
901
Prior art
if an abandoned application was previously published under 35
U.S.C. 112(b), that patent application publication is available as prior art under
35 U.S.C. 102(a) and 102(b) as of its patent application publication date
this is due to the fact that a patent application publication is considered to
be a "printed publication" within the meaning of 35 U.S.C. 102(a) and
102(b)
pending U.S. applications filed before November 29, 2000, that are
not voluntarily published, and applications filed on or after November 29, 2000,
which have not been published, are generally preserved in confidence
Proper
prior art references:
canceled matter:
matter that is canceled from
the application file wrapper of a U.S. patent may be used as prior art
it
will count as prior art as of the patent date since it is then considered prior
public knowledge under 35 U.S.C. 102(a)
it will not be considered a proper
reference as of the filing date under 35 U.S.C. 102(e)
copending abandoned
applications:
if a patent refers to and relies on the disclosure of a copending
abandoned application, the disclosure will be considered a prior art reference
if
a reference patent claims the benefit of a copending but abandoned application
disclosing the same subject matter as the patent, the abandoned application may
be considered prior art
the effective date of the reference in regards to
the common subject matter is the filing date of the abandoned application
foreign
patents:
in general, a foreign patent and the contents of its application
should not be cited as a reference until an examiner can confirm its date of patenting
or publication by reviewing a copy of the document
