USPTO Reverses Course on IPRs, New Memo Demands Explicit Prior Art
For every claim element
In a decisive move that will alter strategies for challenging patents, the United States Patent and Trademark Office (USPTO) announced it will no longer waive a key procedural rule for inter partes review (IPR) petitions. A July 31, 2025, memorandum from the Acting Director mandates strict enforcement of 37 C.F.R. § 42.104(b)(4), which requires that a petition "must specify where each element of the claim is found in the prior art patents or printed publications relied upon" [¶ 1, 11].
Effective for all petitions filed on or after September 1, 2025, this policy eliminates a petitioner's ability to use evidence like applicant admitted prior art (AAPA), expert testimony, or common sense to bridge gaps in the cited prior art [¶ 2, 16].
The shift promises greater clarity for patent owners and the Patent Trial and Appeal Board (PTAB) but imposes a significant new burden on those seeking to invalidate patents.
A Response to Judicial Precedent
The policy change directly supersedes guidance from 2020 and 2022, which had permitted a more flexible approach where certain admissions in a patent's specification could satisfy a claim element [¶¶ 5, 7]. The USPTO now considers this prior stance "no longer consistent with Federal Circuit precedent concerning the use of AAPA to supply a missing claim limitation" [¶ 7].
The memorandum points specifically to the legal complexities arising from cases like Qualcomm Inc. v. Apple Inc. [¶ 8]. The Federal Circuit’s decisions in Qualcomm created uncertainty about when, if ever, AAPA could form the "basis" of a patentability challenge without violating the statutory requirement that IPR grounds be based on "patents or printed publications" [¶ 8].
Rather than continue to "navigate these limited uses and risk further litigation," the USPTO has opted for following a bright-line rule [¶ 14].
The New, Rigid Standard
The practical effect of this enforcement is unambiguous. According to the memorandum, evidence categorized as "general knowledge," which includes AAPA and expert testimony, "may not be used to supply a missing claim limitation" [¶ 2]. Any petition failing to map every claim element to a specific disclosure within a patent or printed publication will be denied consideration by the PTAB [¶ 3].
This does not render general knowledge irrelevant in IPRs. The USPTO clarifies that such evidence may still be used to support an argument for why a person of ordinary skill would have been motivated to combine prior art references or to demonstrate how a skilled artisan would have understood a reference's disclosure [¶ 4]. However, its function is now strictly limited to providing context, not substance.
A Shift Favoring Certainty and Patent Owners
The USPTO presents the policy as a means to achieve administrative efficiency and provide fairness to patent holders. Enforcing the rule, the agency states, will "provide a clear means for (i) identifying the petitioner's legal and factual basis for satisfying the threshold for instituting IPR, and (ii) providing the patent owner with notice as to the basis for the challenge to the claims" [¶ 14].
This stricter gatekeeping function is a clear benefit for patent owners, who will now face challenges grounded entirely in tangible prior art documents. It removes the ambiguity of defending against arguments that rely on what an ordinary artisan would have supposedly known. The agency believes this is "the best course of action to provide certainty to the parties, the Board, and the public, and to allow for the efficient administration of the Office" [¶ 15].
While prioritizing efficiency, the USPTO acknowledges its new application of the rule may be more restrictive than the governing statute. The memo concedes that Rule 104(b)(4), as enforced, "may be narrower than 35 U.S.C. § 311(b)" [¶ 15].
It even cites the Federal Circuit's recent decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., which found a petitioner did not violate the statute by using general knowledge and AAPA to supply missing elements [¶ 15].
The agency is thus adopting a procedural requirement that goes beyond what the statute itself may compel, justifying the move by its "broad discretion to prescribe regulations" to ensure the system's integrity and timely completion of proceedings [¶ 12].
For patent practitioners, the directive is clear. Petitioners must now ensure their prior art is effectively self-contained, with every necessary disclosure present on the face of the documents.
Patent owners, in turn, can leverage a powerful new weapon in their preliminary response arsenal: scrutinizing petitions for strict compliance with this freshly enforced mapping requirement.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.