New USPTO Guidance and Implications for Better Patent Drafting

The U.S. Patent and Trademark Office (USPTO) recently issued new guidance on the topic of applicant admitted prior art (known as “AAPA”), and there are a couple of important takeaways for anyone drafting or prosecuting patent applications.

Last year we wrote a blog post on the topic of AAPA. There, we described the types of things that might be considered AAPA and gave some tips on how to avoid related pitfalls when drafting patent applications.

For inventors and patent drafters, it’s important to understand AAPA because patent examiners can use AAPA to reject patent applications, and patent infringers can use AAPA to invalidate issued patents. Therefore, if you unintentionally create AAPA, you can inadvertently torpedo your own patent rights.  

From a patent drafting perspective, the interesting part of the new USPTO guidance is that it explains—and potentially expands—the scope of what might be considered AAPA.

What does the new USPTO Guidance on AAPA say?

The new USPTO guidance (the “Guidance,” for short) is a memorandum from USPTO Director Iancu to the Patent Trial and Appeal Board (PTAB), dated August 18, 2020.

The Guidance deals with a fairly specific but important issue in the context of Inter Partes Reviews (IPRs). An IPR is a legal process at the USPTO, in which one person challenges the validity of another person’s issued patent; if the challenge is successful, the patent is canceled.

The Guidance creates a new rule that says AAPA cannot be the “basis” of an IPR.

According to federal statute, if someone wants to initiate an IPR to cancel a patent based on prior art, the prior art must be a “patent or a printed publication.” And now, according to the Guidance, AAPA does not count as a “patent or a printed publication” for the purpose of initiating an IPR.

This might sound like a win for patent owners. But notably, the Guidance indicates that AAPA can be used as evidence in an IPR. Here’s the summary conclusion straight from the Guidance (page 9):

In summary, the basis of an IPR must be one or more prior art patents or printed publications. Statements in the specification of the patent being challenged are not prior art patents or printed publications, and thus cannot form the basis of an IPR. Nevertheless, the Board can also rely on the general knowledge of a person with ordinary skill in the art in assessing the patentability of the patent claims at issue. Statements made in the specification of the patent that is being challenged in an IPR can be used as evidence of such general knowledge, and thus, provided the basis of the IPR is one or more prior art patents or printed publications, can be used to (1) supply 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) support a motivation to combine particular disclosures; or (3) demonstrate 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.

So even though the applicant’s statements in the specification can’t be the “basis” of an IPR, they can still be used against the applicant in an IPR proceeding.

The fact that the applicant’s statements can be used against the applicant in an IPR proceeding isn’t surprising at all, and it’s consistent with the general admonition—well known to patent practitioners—that anything you say as a patent applicant might eventually be used against you. 

So the Guidance doesn’t seem to really change anything for patent drafters. Or does it?

Implications for Patent Drafting

From a patent drafting perspective, the interesting thing about the Guidance is that it provides some examples of statements that might used as evidence against the applicant. And there was one example that jumped out at me. Here’s an excerpt from the Guidance (pages 5-6):

[A] challenged patent’s specification can be used in an IPR to the extent they provide evidence of the general knowledge of those with ordinary skill in the art. For example, specifications sometimes include statements such as “It is well known that …”, “It is well understood that …”, “One of skill in the art would readily understand that… “; or may describe technology as “conventional,” or “well-known.” Thus, panels shall examine whether the petitioner uses the statements in the specification as evidence of the general knowledge of a person of ordinary skill in the art and in conjunction with at least one prior art patent or printed publication.

Calling something “well-known” or “conventional” definitely sounds like an admission of prior art (at least, to a patent attorney’s ears), so that part wasn’t surprising at all.

But I was intrigued to see “One of skill in the art would readily understand that… ” buried in the list. I see this type of phrase in patents quite frequently, and most of the time, I don’t think the intention is to “admit” prior art or to indicate the general knowledge of a person of ordinary skill in the art.

Instead, this type of phrase is often used to explain what a person of ordinary skill in the art will understand from reading the patent itself. In other words, this phrase is often used in patents to expand the scope of the invention, which is quite different from describing well known or conventional knowledge.

It’s not hard to find examples of what I mean. To demonstrate the point, I just did a search of the USPTO’s patent database for the term “readily understand”, and here are a few of the hits:

• “… those of skill in the art can readily understand how to implement the invention in different contexts from the disclosure contained herein.” U.S. Pat. No. 10,771,611.
• “One having ordinary skill in the art will readily understand that the above may be practiced with steps in a different order, and/or with hardware elements in configurations that are different than those which are disclosed.” U.S. Pat. No. 10,771,239.
• “In various non-limiting, exemplary embodiments the method for generating a stable delay time may include the following steps, limitations, features, characteristics, alone or in various combinations as one skilled in the art would readily understand: comprising using a single CMOS-integrated piezoelectric transducer to transmit and receive the ultrasonic wave packet; …” U.S. Pat. No. 10,771,043.

In the examples above, it seems relatively clear that statements are describing the scope of the invention, not the prior art.

In fact, the last excerpt appears in the “Summary” section of the patent (also known as the “Summary of the Invention”), in a paragraph that begins “An aspect of the invention is …” And the material that the patent says “one skilled in the art would readily understand” also appears in the claims of the patent! I doubt that the drafter intended to characterize the claims as general knowledge.

In other words, people who use this type of language in patents are often not intending to describe “general knowledge.” And I’m very skeptical whether these example statements would actually be construed that way. But for patent drafters, it’s good to know that they might be.

A Good Drafting Rule

To be clear, I agree that the plain language “One of skill in the art would readily understand that… ” does sound like it’s introducing a statement about general knowledge. And I’m sure that phrases like this are often used that way, so I agree with the USPTO’s Guidance in that sense.

But I’m also certain that phrases like this are not always used that way (as demonstrated by the examples above). And that’s the key point: Patent drafters need to beware that this language might be used against them in an adversarial setting.

Honestly, I’ve never been a fan of using phrases like “one skilled in the art would readily understand …” in a patent application.

I realize there are some legitimate reasons to use those types of phrases, but I think it’s almost always better to avoid them. Perhaps the most compelling reason to avoid them—they rarely add anything of value, and so their main effect is to make the patent application more convoluted and harder to read.

Simply put, these phrases are usually needless. To demonstrate the point, cross out the bold language in the second and third examples above, and it doesn’t change the meaning of the sentence.  As Strunk and White said, “OMIT NEEDLESS WORDS.”

Therefore, in general, patent drafters should avoid these phrases (and variations of them) in a patent application:

• “One having ordinary skill in the art will readily understand …”
• “A person of ordinary skill in the art will appreciate …”
• “Those skilled in the art will recognize …”

This has been my general practice, and the recent USPTO Guidance on AAPA provides even more compelling reasons to consider it a best practice.

If you’d like to learn more about prior art and the patent process generally, you can download our comprehensive guide here.

Takeaway for Companies Filing Patents

The patent process is full of landmines, and AAPA is just one of them. If you’re a technology company and you want to obtain valuable, enforceable patent rights, you need to hire a competent patent law firm to handle your patent filings. If you’d like to learn more about our team, please get in touch!