On August 18, 2020, the USPTO issued a guidance memorandum on the treatment of applicant statements in the challenged patent in inter partes review (IPR) proceedings under Section 311, which addresses the use of applicant statements as Applicant Admitted Prior Art (AAPA). When an IPR is filed, the basis of that IPR must be prior art consisting of either a patent or printed publication. An interesting situation arises when the disclosure of the challenged patent itself admits or allegedly admits certain material as prior art. This situation has presented itself to the Patent Trial and Appeal Board (Board) on a number of occasions and has received inconsistent treatment. The purpose of this memorandum is to clarify that an applicant’s own statements in the challenged patent cannot serve as the basis for instituting an IPR. But the use of AAPA is still available as evidence the Board may consider for more limited purposes.
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