USPTO Guidance favorable to Patent Owners

The USPTO issued guidance to the Patent Trial and Appeal Board (PTAB) regarding reliance on applicant admitted prior art in a petition for inter partes review that is favorable to Patent Owners.

The guidance memo provides the office’s interpretation of 35 U.S.C. § 311(b) that an inter partes review (IPR) must be based on a prior art patent or printed publication, and accordingly that Applicant admitted prior (AAP) art in the challenged patent cannot be used for instituting an IPR. Nonetheless, AAP 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. The guidance memo is binding on the PTAB.