USPTO Says Patent Specification Is Evidence, Not Prior Art

Law360 (August 19, 2020, 4:28 PM EDT) -- Statements in a patent's specification can help inform the Patent Trial and Appeal Board's decision in an inter partes review, but can't be used as prior art to challenge the same patent, the director of the U.S. Patent and Trademark Office has said in binding guidance.

While the PTAB can use the patent specification as general evidence to help settle some questions in the IPR, it can't stand alone as a piece of prior art that could invalidate itself as obvious or anticipated, Andrei Iancu said in guidance Tuesday.

"A patent cannot be prior art to itself, and thus the patent...

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