USPTO Issues Guidance on Treatment of Applicant Admitted Prior Art in IPRs


Director Iancu issued a memo setting forth the USPTO’s interpretation of 35 USC 311(b) as it pertains to statements by the Applicant regarding prior art.  In particular, Director Iancu states that “the basis” of every IPR must be “prior art consisting of patents or printed publications.”  Since admissions by Applicant regarding what is in the prior art are not prior-art patents, Director Iancu states that such statements alone cannot provide the basis for an IPR.

The Guidance is stated to be binding on the Board.