What precautions should patent applicants take regarding admissions in their applications?

Patent applicants should be cautious when making statements in their applications to avoid unintentional admissions of prior art. Based on the guidance in MPEP 2129, here are some precautions applicants should take:

• Be precise in language: Avoid characterizing your own work or others’ work as “prior art” unless you intend it to be treated as such.
• Carefully draft background sections: When describing the state of the art, be clear about what is your invention and what is existing technology.
• Review all communications: Carefully review all communications with the USPTO, including the specification, claims, and responses to office actions, to ensure no unintended admissions are made.
• Use qualifying language: When discussing related work, use phrases like “it is believed” or “it may be” to avoid definitive statements that could be construed as admissions.
• Consult with a patent attorney: Seek professional advice to ensure your application and communications are drafted to avoid unintentional admissions.

Remember, as stated in MPEP 2129, “Unless the admission is used as prior art, and the evidence is to the contrary, a statement by an applicant in the specification or made during prosecution identifying the work of another as ‘prior art’ is not an admission that the work is prior art against the claims.” However, it’s best to err on the side of caution to prevent potential issues during examination.

To learn more:

• admissions
• precautions
• patent applications
• MPEP 2129