USPTO Guidance Memo Clarifies Possible Use of Patent Specification in IPR

The USPTO Director-General has issued a guidance memorandum to standardise how the Patent Trial and Appeal Board (PTAB) will treat applicant admitted prior art (AAPA) in Inter Parties Review (IPR) proceedings.

In 2011 the Leahy-Smith America Invents Act (AIA) replaced inter-partes re-examination with inter-partes review so as to make the alternative to full litigation more streamlined and affordable – a change that was especially welcomed by non-US applicants and litigants including those from Australia and New Zealand. Under 35 USC § 311(b) an IPR party can challenge the validity of a patent and have input on its re-examination by the PTAB, but the grounds for re-examination are restricted to anticipation and obviousness and only in respect of patents and printed publications.

There has been variation in whether the PTAB treats statements in the applicant’s patent specification as qualifying as prior art. Some PTAB decisions have held that admissions made by the applicant in the specification about the state of the art fall within the ambit of § 311(b) as they are statements about the prior art and are in a patent. However, in accord with the majority of relevant PTAB decisions, the Director-General held that a patent cannot be prior art to itself and so cannot be the basis for an IPR as only qualifying prior art can form the basis of an IPR.

The Director-General, though, further clarified that while AAPA cannot form the basis of an IPR, it can still be used to supply legally relevant information about the common general knowledge of one skilled in the art. In particular, where a specification includes statements such as “It is well known that ...”, “It is well understood that ...”, “One of skill in the art would readily understand that ...”; or describes technology as “conventional”, or “well-known”, that can be used in conjunction with qualifying prior art to form an obviousness objection.

Provided it is used in conjunction with qualifying prior art, such AAPA can be used as evidence of the common general knowledge for the purpose of:
(1) supplying 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) supporting a motivation to combine particular disclosures; or
(3) demonstrating 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.

This clarification will hopefully mean US patentee's will be less likely to end up with Pavlova on their face!

Author: Quinn Miller

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