The Patent Office recently announced that it will begin enforcing a rule that requires that inter partes review (IPR) petitions “specify where each element of the claim is found in the prior art patents or printed publications relied upon.” While this rule has been in place since the introduction of IPRs in 2012, it has been enforced only loosely, if at all. This major policy shift will take effect on September 1, 2025, and as discussed below, it will likely benefit patent owners and innovators seeking patents.
A Refresher on IPR Proceedings
An IPR is a legal proceeding conducted before the Patent Trial and Appeal Board of the Patent Office and allows a third party to challenge the validity of issued claims in a patent. IPR proceedings are limited to challenges based on anticipation or obviousness using prior art patents or printed publications (in litigation in federal court, more types of validity challenges are available). More streamlined and cost-effective than litigating in federal courts, IPRs have become a popular tool for challenging patents since IPRs were introduced by the America Invents Act in 2012. Another advantage of IPRs is that the burden of proof is lower because, unlike in federal court litigation, there is no presumption that the challenged patent is valid.
Key Policy Changes
Previously, the Patent Office allowed for more flexibility in IPR proceedings by allowing petitioners to rely on “general knowledge” to help satisfy petition requirements. Collectively, general knowledge encompasses applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence beyond prior art patents or printed publications. In fact, just two weeks before the Patent Office’s announcement, the Federal Circuit issued a precedential decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., affirming the patent challenger’s use of AAPA as background knowledge to provide a missing claim limitation.
The Patent Office’s announcement now rescinds this flexibility in crafting validity challenges. Specifically, IPR petitioners will no longer be able to use general knowledge to bridge evidentiary gaps and instead must rely on the four corners of prior art patents or printed publications to show that each element of the challenged claims is disclosed. The Patent Office, however, clarified that “[g]eneral knowledge may still be used in an IPR to support a motivation to combine or to demonstrate the knowledge of a person having ordinary skill in the art.”
Takeaways
The policy change is expected to raise the bar for petitioners and potentially provide a procedural advantage for patent owners seeking to defend their patents. Petitioners will want to ensure that prior art references comprehensively disclose all elements of the challenged claims. On the other hand, patent owners should closely analyze IPR petitions for improper reliance on general knowledge. An IPR petition that relies on general knowledge may provide grounds to argue that the petition fails to meet the threshold requirements for institution of the IPR.
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