The United States Patent and Trademark Office (USPTO) issued a memorandum regarding the use of applicant admitted prior art for purposes of an inter partes review.
The USPTO explained that: "the basis of an IPR must be one or more prior art patents or printed publications. Statements in the specification of the patent being challenged are not prior art patents or printed publications." Thus, "admissions by the applicant in the specification of the challenged patent standing alone cannot be used as the basis for instituting an IPR, under either § 102 or § 103."
However, "[s]tatements in a challenged patent's specification may be used...when they
evidence the general knowledge possessed by someone of ordinary skill in the art. That evidence, if used in conjunction with one or more prior art patents or printed publications forming "the basis" of the proceeding under § 311, can support an obviousness argument."
As such, such statements may be used to: "(1) supply missing claim limitations that were generally known in the art prior to the invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents); (2) support a motivation to combine particular disclosures; or (3) demonstrate the knowledge of the ordinarily-skilled artisan at the time of the invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents) for any other purpose related to patentability."
Read the memo here.
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