New USPTO Rules Take Effect: Applicants' Self-Declared Prior Art Will No Longer Be Acceptable in PTAB IPR Proceedings

On July 31, 2025, the United States Patent and Trademark Office (USPTO) issued a new memorandum, which made important changes to the Patent Trial and Appeal Board (PTAB) review process. This change will take effect on September 1, 2025, at which time the PTAB will no longer be exempted from the requirement that applicants identify the location of each patent application element in the prior art patent or printed publication relied upon in their searches, as required by 37 CFR § 42.104(b)(4).

The memorandum clarifies that "prior art patents and printed publications" that constitute grounds for prior art rejection do not include applicant-admitted prior art (AAPA), expert testimony, common knowledge, or any other evidence other than prior art patents or printed publications. This change is intended to provide clear guidance to parties in IPR proceedings and is consistent with recent Federal Circuit precedent.

Key changes:

The PTAB will now strictly enforce the requirement that applicants identify each claim in their application documents as located in prior art patents or printed publications. This change supersedes previous memoranda issued in 2020 and 2022 that permitted exemptions from this rule in certain circumstances and no longer considers the use of AAPA for providing claims.

Although common knowledge (including AAPA, expert testimony, and common sense) can no longer be used to fill missing claim limitations, applicants may still cite and rely on them to support motivation to incorporate by reference or to demonstrate the common sense of the skilled artisan.

For applications filed from September 1, 2025, applicants must identify the claims in detail in the prior art patent or printed publication.

From a broader perspective, this memorandum represents one of many recently issued by the USPTO that explicitly supersede previous administration memoranda regarding post-approval administrative procedures. Similar to recent memoranda and procedural changes, this one favors patentees by preventing self-reported disclosures by patent holders from being used directly against their patents. However, despite this change, patentees must still carefully consider when drafting patent applications regarding when to describe prior art (or the state of the art) and when to shift the focus to technological advancements in applications.