USPTO Issues Guidance on Applicant Admitted Prior Art

Written August 20, 2020

The US Patent and Trademark Office on August 19, 2020, issued guidance memorandum to the Patent Trial and Appeal Board (PTAB) regarding reliance on applicant admitted prior art in a petition for inter partes review.

This memorandum, issued under the Director’s authority to set forth binding agency guidance, provides the Office’s interpretation of 35 U.S.C. § 311(b) that the basis for an inter partes review (IPR) must be a prior art patent or printed publication, and that statements regarding prior art in the challenged patent therefore cannot serve as the basis for instituting an IPR.

Such statements, however, may provide evidence of the general knowledge possessed by a person of ordinary skill in the art, and may be used to support an obviousness argument in conjunction with one or more prior art patents or printed publications.