There are a variety of ways that people speak and explain things in real life that can really get a patent applicant into trouble. Every word matters, it is just that simple. When you file a patent application everything in that application should be a self serving description of the invention. Patent applications should not read like a laboratory notebook, or be written to tell the history of what you have done (or tried) and why. Patent applications positively describe the invention, period. Stick with the invention and do not embellish. Describing your invention as you might to a friend at a cocktail party will only get you into trouble.
And for goodness sakes, don’t make any admissions! Admissions are unnecessary. Anything you may want to say in order to set up an argument you plan to make later can be argued later without making comparisons or unnecessary statements about the prior art in your patent application. As long as you adequately and accurately describe your invention positively in the patent application those arguments and explanations can be made during prosecution if and when they are ever necessary— and only if and when they actually become necessary.
So what is an admission? A statement made during patent prosecution identifying the work of another as prior art is called an admission. Admissions can and will be relied upon by patent examiners for both novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103) determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the express terms of the statute. See Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988)(patent owners admission during prosecution was “strong evidence” that was “binding upon him” in litigation).
Admissions should be avoided at all costs, regardless of how innocent they seem to be. This is a lesson that all new patent practitioners and inventors need to take to heart. No matter how innocuous the statement may seem, always remember that no good deed will go unpunished! Everything you do say can and will be used against your patent once it issues — forever. Patent applicants should be given a Miranda warning prior to filing a patent application.
If the specification of your patent application (i.e., the written portion of the application except for claims) identifies work done by another as prior art, the subject matter so identified is treated as admitted prior art. In re Nomiya, 509 F.2d 566, 571 (CCPA 1975) (holding applicant’s labeling of two figures in the application drawings as prior art to be an admission that what was pictured was prior art relative to applicant’s improvement). Ordinarily, there is no good reason to identify the prior art in the specification of a U.S. patent application. Only mischief and grief can come from violating this rule.
Of course, notice that the focus here relative to admissions is on what is included in the patent application itself. It can be and most frequently is extremely beneficial for the inventor and patent practitioner to spend time identifying exactly what is unique compared to the prior art so that the invention can be described to make sure that uniqueness is explained with as much detail as possible in the patent application. You just want to be extremely careful about actually identifying the prior art and/or making any comparisons (or explaining differences) vis-a-vis the prior art in a patent application.
A statement relating to the work of the inventor, however, is not an admission that the inventor’s own work is prior art. The law presumes that the inventor is knowledgeable of their own work, and will continue to build upon their own inventions. See Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003); see also Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650 (Fed. Cir. 1984) (“[W]here the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work.”).
Drafting a claim in Jepson format is an implied admission that the subject matter contained in the the preamble is the prior art work of another. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982) (holding preamble of Jepson-type claim to be admitted prior art where applicant’s specification credited another as the inventor of the subject matter of the preamble). However, this implication may be overcome where the applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910 (CCPA 1979) (holding preamble not to be admitted prior art where applicant explained that the Jepson format was used to avoid a double patenting rejection in a co-pending application and the examiner cited no art showing the subject matter of the preamble). Moreover, where the preamble of a Jepson claim describes the applicant’s own work, such may not be used against the claims. Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910.
Nevertheless, Jepson claims are disfavored in the United States and should be avoided.
Having said this, a Jepson claim format can offer a useful analytical framework for inventors and novice patent practitioners as they attempt to “sketch” a claim. It is critical that the claims of the patent application incorporate what makes the invention new and nonobvious (i.e., unique). A Jepson claim offers a somewhat easier analytical format for novices in that it explains specifically what makes the invention unique in the claim. Everything prior to the transition “wherein the improvement comprises” is typically admitted prior art (as discussed above). Only that which comes after the transition in the claim is treated as being new.
I do not recommend using Jepson claims because this claiming technique makes it very easy for the patent examiner to use your own words against you and simply focus on finding those elements you have specifically identified as the only ones contributing to the invention being unique. Of course, writing text that specifically identifies what you view as the improvement and what you view as being within the prior art can be a useful exercise that helps focus you on the important aspects of what must be disclosed in a patent application.
The point here, now for the second time, is there is a difference between the work you do yourself to help understand the parameters of the invention and what you actually write into the patent application. Sketching claims and making sure you have identified the core uniqueness of the invention is absolutely essential. Saying that it is a core uniqueness or making statements about the prior art in the patent application itself is a big mistake.
Another question that sometimes comes up relative to admissions is whether the prior art disclosed to the patent examiner is considered an admission. The short answer is no.
Once a patent application gets into the prosecution phase any material prior art that is known by the applicant or the applicant’s representative must be disclosed to the Patent Examiner in order to fulfill the duty of candor mandated by 37 C.F.R. 1.56. The listing of a reference in an information disclosure statement filed to notify the Examiner of material prior art is not taken as an admission that the reference is in fact prior art against the claims. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-55 (Fed Cir. 2003); see also 37 CFR 1.97(h) (“The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).”).
Today we have explored the topic of admissions. A closely related matter deals with those things that are said during prosecution of the patent application. The rule that any good deed goes punished remains constant, and anything you do say can and will be used against the patent forever. Prosecution related statements that cause concern arise under the law as prosecution history disclaimer and prosecution history estoppel. Stay tuned for further discussion of those topics in an upcoming article.
For more information about basic patent application drafting please see:
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Drafting Lessons from a 101 Loss in the Eastern District of Texas
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- Understand Your Utility Patent Application Drawings
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600
- A Tale of Two Electric Vehicle Charging Stations: Drafting Lessons for the New Eligibility Reality
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- Software Patent Drafting Lessons from the Key Lighthouse Cases
- Patent Drafting Basics: Instruction Manual Detail is What You Seek
- How to Write a Patent Application
- Admissions as Prior Art in a Patent: What they are and why you need to avoid them
- Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
- Patent Drafting: Proving You’re in Possession of the Invention
- Patent Drafting: Understanding the Enablement Requirement
- Patent Drafting 101: Say What You Mean in a Patent Application
- Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
- Learning from common patent application mistakes by inventors
- Defining Computer Related Inventions in a post-Alice World
- Patent Application Drafting: Using the Specification for more than the ordinary plain meaning
- Patent Strategy: Advanced Patent Claim Drafting for Inventors
- Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application
- Patent Drafting for Beginners: The anatomy of a patent claim
- Patent Drafting for Beginners: A prelude to patent claim drafting
- The Inventors’ Dilemma: Drafting your own patent application when you lack funds
- Patent Drafting: Describing What is Unique Without Puffing
- 5 things inventors and startups need to know about patents
- Drafting Patent Applications: Writing Method Claims
- An Introduction to Patent Claims
- Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
Join the Discussion
11 comments so far.
AnonFebruary 13, 2018 10:05 am
Damian, I started looking into the cases by first looking at the section of the MPEP you cited.
I realize that many of my comments are comments that you should have already been aware of, given as they are reflected in that very same MPEP section you cited.
Care to explain how these comments missed your notice in formulating a reply? These items strongly go against the position you seem to want to stake out.
AnonFebruary 13, 2018 09:28 am
Damian, as to your burden switch, that – like other burdens -can only switch if the prima facie case was made – my comment above indicates merely a few examples where no such prima facie burden switch occurs. This is likely why the Office protocol calls out for the examiner to make the affirmative statement in the next action.
You are absolutely correct in calling out the fact that examiners are not Federal judges, and this point calls into question the very fact that examiners are applying the same “two step” that judges are using – given that CAFC judges have labeled that two-step method as being an application of common law law writing.
AnonFebruary 13, 2018 09:10 am
There is a premise often absent: that being that the official notice taken was indeed taken properly – in a manner in which a full and proper rebuttal by the applicant could be made.
As bp also notes, the proper procedure is that the examiner provides an affirmative statement (to which clearly, the applicant has the opportunity to make an actual affirmative statement).
That’s more than a bit different than most cases of “official notice” that I have been involved with.
And – as timely with the recent case on the factual underpinnings regarding 101 (assertions of “generic” or “conventional”), wherein I have YET to see anything remotely close to a proper taking of official notice***, I posit that the lack from the Office in their following of the proper procedure necessarily means that the applicant cannot be deemed to have made the necessary affirmative statement – regardless of the “tacit” path outlined in the MPEP and Case law snippets (provisio being that I am currently traveling and will want to check out the cases directly befitting cementing the comment).
***Two comments that supplement this: in the 101 context, I have seen repeat f attempts to take official notice and when calllef our, the examiner flatly DENIES that they are attemtping to take official notice – and probably for good reason, as I also explicitly note that the Office has mandated that it is improper to take official notice in a number of circumstances including in order to establish the state of the art. In other words, official notice CANNOT be taken for the factual predicate of the 101 examination (and any bald assertion of “generic” or “conventional”).
bpFebruary 13, 2018 03:03 am
Thank you Anon and Damien, I believe “Official Notice” and a holding of AAPA stems from misapplication of “Judicial Notice”. I would like to deep dive into the genesis of AAPA based on not challenging ON – I’m thinking there is a hole somewhere. From MPEP: “If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.” How did “prior art” become “admitted prior art” and then become “applicant admitted prior art” (AAPA)? Judicial notice has its limits: “(f) Instructing the Jury. . . . In a criminal case, the court must instruct the jury that it may or may not accept the noticed fact as conclusive.” As to ON and AAPA, I think there’s some creep going on – an examiner is not a federal judge.
DamienFebruary 12, 2018 05:22 pm
@bp “failure to challenge being considered “Applicant Admitted Prior Art” (AAPA)?”
This is from USPTO Site
Failure to Traverse Official Notice. “B.If Official Notice Is Taken of a Fact, Unsupported by Documentary Evidence, the Technical Line of Reasoning Underlying a Decision To Take Such Notice Must Be Clear and Unmistakable
In certain older cases, official notice has been taken of a fact that is asserted to be “common knowledge” without specific reliance on documentary evidence where the fact noticed was readily verifiable, such as when other references of record supported the noticed fact, or where there was nothing of record to contradict it. See In re Soli, 317 F.2d 941, 945-46, 137 USPQ 797, 800 (CCPA 1963) (accepting the examiner’s assertion that the use of “a control is standard procedure throughout the entire field of bacteriology” because it was readily verifiable and disclosed in references of record not cited by the Office); In re Chevenard, 139 F.2d 711, 713, 60 USPQ 239, 241 (CCPA 1943) (accepting the examiner’s finding that a brief heating at a higher temperature was the equivalent of a longer heating at a lower temperature where there was nothing in the record to indicate the contrary and where the applicant never demanded that the examiner produce evidence to support his statement). If such notice is taken, the basis for such reasoning must be set forth explicitly. The examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support the conclusion of common knowledge. See Soli, 317 F.2d at 946, 37 USPQ at 801; Chevenard, 139 F.2d at 713, 60 USPQ at 241. The applicant should be presented with the explicit basis on which the examiner regards the matter as subject to official notice so as to adequately traverse the rejection in the next reply after the Office action in which the common knowledge statement was made.”
So look at Chevenard, not sure how much of that has changed in AIA. Essentially, because they are taking “Official Notice” of something, it must be responded to otherwise it will “vest” and be officially noticed.
Its burden of proof. There is a rebuttable presumption that anything the examiner is taking Official Notice of is correct, the examiner allows you to rebut this presumption (traverse), but if you do not then the presumption stands.
AnonFebruary 12, 2018 01:54 pm
I am curious – do you have a case where a “failure to challenge” is taken an affirmative applicant statement?
Lost In NorwayFebruary 12, 2018 05:12 am
Many of my applications go to the EPO. Due to the requirements, it can be difficult to meet the requirements of clearly differentiating my invention from the prior art without actually talking about prior art. But never using the word “prior art” if I can avoid it. I have found this a much easier issue to tackle and keep other’s inventions out of my applications in the US.
bpFebruary 12, 2018 01:24 am
Excellent post – as usual – why IPWD is #1. How about a post on origins of “Official Notice” and failure to challenge being considered “Applicant Admitted Prior Art” (AAPA)?
Confused SCOTUSFebruary 12, 2018 12:08 am
I have always wondered why some applicants incorporate by reference a laundry list of patents and patent application publications. The negative statements in the backgrounds of those documents can serve as admissions.
Paula ChavezFebruary 10, 2018 09:38 pm
In Australia where I practice (but of course write for international filings) there is a practice and soon a rule, that an “object of the invention” must be set out. In prosecuting foreign applications in Australia we amend the application to include that the object is to attempt to ameliorate the problem if one is set out. If not, we use the independent claims to make one up. Does a recognition of a problem somehow become a prior art admission, like maybe the invention would be obvious? I’ve had US mega-filing client’s who don’t even want a problem stated.
Pro SeFebruary 10, 2018 01:43 pm
Even after the patent issue, in any trial where the inventor/patent owner is sworn under oath to give a deposition, some crafty attackers will attempt to have the deponent make a Rule 801 statement that will then be asserted in an attack to the PTAB and court, as having made an overriding admission.