Updated applicant admitted prior art (AAPA) memorandum

Superseded on July 31, 2025 by Enforcement and Non-waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews (July 31, 2025). The memorandum sets out the USPTO's reading of 35 U.S.C. § 311(b) on use of applicant admitted prior art (AAPA) in inter partes reviews. Admissions in the challenged patent's specification cannot be the sole basis of a ground, but when a petition also relies on at least one prior art patent or printed publication, the Board must consider the admissions as evidence of the skilled artisan's background knowledge, including to supply claim limitations, support motivation to combine, or show general knowledge. It binds all Board members and supersedes the August 18, 2020 guidance. Petitioners may rely on specification admissions alongside at least one prior art patent or printed publication, even where an admission supplies a claim limitation, but a ground resting solely on AAPA is impermissible. Patent owners may dispute whether a statement is an admission or what it shows, and may offer argument or expert testimony, and the Board adjudicates those disputes. The memorandum rests on 35 U.S.C. § 311(b), the Federal Circuit's decision in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022), and the Director's authority under 35 U.S.C. 3(a)(2)(A). It also reasons from 37 CFR § 42.104(b)(4), § 42.5(b), and 35 U.S.C. §§ 312(a)(3)(B), 314(a) and 316(a)(3). WHAT IT DOES: Directs panels to determine whether a petition relies on specification admissions in combination with at least one prior art patent or printed publication; if so, the admissions do not form the basis of the ground and must be considered in the patentability analysis. Admissions may supply missing limitations generally known in the art, support motivation to combine, or show the skilled artisan's knowledge for other patentability purposes. Panels should not exclude admissions based on how many limitations they supply or the order of the combination, and should review the ground as a whole for each claim as a whole. Panels should not deny a petition under 37 CFR § 42.104(b)(4) because it points to general knowledge or admissions to satisfy a limitation. Disputes over whether a statement is an admission or what it shows are for the Board to decide, with expert testimony allowed from either side. WHO AND WHEN: Addressed to the members of the Patent Trial and Appeal Board and dated June 9, 2022. It applies to inter partes reviews under § 311 and must be followed by all Board members. It does not apply to requests for ex parte reexamination under 35 U.S.C. § 301 et seq. KEY QUOTE: "Rather, Board panels should review whether the asserted ground as a whole as applied to each challenged claim as a whole relies on admissions in the specification in combination with reliance on at least one prior ait patent or printed publication." (p. 5) EARLIER GUIDANCE AFFECTED: Supersedes prior guidance, expressly the August 18, 2020 "Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311" (2020 Guidance). PRACTICE TIP: Anchor every ground in at least one prior art patent or printed publication, and use specification admissions only as evidence of general knowledge. Never rely on AAPA alone. Patent owners should contest the characterization or significance of a statement with argument or expert evidence instead of arguing that admissions are categorically barred. Issued by Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.