Under 35
U.S.C. § 311(b), IPRs are only instituted "on the basis
of" patents and printed publications. But, occasionally
petitioners have relied on statements in a patent's
specification as "applicant admitted prior art" and
included that prior art in their grounds in a petition—either
alone or in combination with other references.
On August 18, 2020, the PTO issued guidelines on how Board panels should
treat applicant admitted prior art, determining that it does not
qualify as "prior art consisting of patents or printed
publications," but falls into the category of evidence that
the Board may consider for more limited purposes.
In the reexamination context, the PTO has not allowed applicant
admitted prior art to be the basis of a reexamination, but has
permitted its use in combination with other prior art patents and
printed publications. Consistent with this, the majority of
Board IPR panels have determined
