USPTO Director clarifies guidance on use of applicant admitted prior art in IPR proceedings

To provide more certainty and predictability in proceedings before the Patent Trial and Appeal Board (PTAB), Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal issued updated guidance to the PTAB on permissible uses of applicant admitted prior art (AAPA) in inter partes review proceedings (IPRs) under 35 U.S.C. § 311. This guidance supersedes the guidance previously issued on August 18, 2020.

The updated guidance clarifies that AAPA does not improperly form the “basis” of an IPR under § 311 when the IPR petition relies on AAPA in combination with one or more patents or printed publications, and is consistent with the recent decision of the Court of Appeals for the Federal Circuit in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022).

To learn more about the policies, procedures, rules, guides, tools, and manuals related to proceedings before PTAB, please visit the resources and guidance webpage on the USPTO website.