Wednesday, August 19, 2020

USPTO - Use of Admitted Prior Art in a Petition for Inter Partes Review

On August 18, 2020, the USPTO issued a Guidance Memorandum to the Patent Trial and Appeal Board (PTAB) regarding reliance on applicant admitted prior art in a petition for inter partes review.

The USPTO stated: "the 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."

Thus, the USPTO memo states IPR challengers cannot ground a petition solely in applicant's admissions in the specification, but can use them to support obviousness along with prior art.

This is uncontroversial, but it reminds how you write a US patent application. The popular Pressman, Patent It Yourself (2018) states that "applicants should indicate the problems of the prior art, if any, and describe and knock all prior art" under the heading Background - Prior Art. However, this is not good advice, a big job, and in my view unnecessary. Instead, it is best to avoid risk of a prior admission in describing and knocking all prior art, especially when the USPTO only requires applicants and attorneys disclose prior art they are aware of that is material to patentability in an information disclosure statement for consideration by the examiner.

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