MPEP § 2129 — Admissions as Prior Art (Annotated Rules)
§2129 Admissions as Prior Art
This page consolidates and annotates all enforceable requirements under MPEP § 2129, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Admissions as Prior Art
This section addresses Admissions as Prior Art. Primary authority: 35 U.S.C. 102, 37 CFR 1.75(e), and 37 CFR 1.97(h). Contains: 1 prohibition, 2 permissions, and 3 other statements.
Key Rules
Optional Claim Content
A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). Where the admitted prior art anticipates the claim but does not qualify as prior art under any of the paragraphs of 35 U.S.C. 102, the claim may be rejected as being anticipated by the admitted prior art without citing to 35 U.S.C. 102.
A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). Where the admitted prior art anticipates the claim but does not qualify as prior art under any of the paragraphs of 35 U.S.C. 102, the claim may be rejected as being anticipated by the admitted prior art without citing to 35 U.S.C. 102.
Jepson Format Claims
Drafting a claim in Jepson format (i.e., the format described in 37 CFR 1.75(e); see MPEP § 608.01(m)) is taken as an implied admission that the subject matter of 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 applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910, 200 USPQ 504, 510 (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 inventor’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, 223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910, 200 USPQ at 510.
Drafting a claim in Jepson format (i.e., the format described in 37 CFR 1.75(e); see MPEP § 608.01(m)) is taken as an implied admission that the subject matter of 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 applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910, 200 USPQ 504, 510 (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 inventor’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, 223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910, 200 USPQ at 510.
Anticipation/Novelty
A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). Where the admitted prior art anticipates the claim but does not qualify as prior art under any of the paragraphs of 35 U.S.C. 102, the claim may be rejected as being anticipated by the admitted prior art without citing to 35 U.S.C. 102.
Claims
Where the specification 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, 184 USPQ 607, 611 (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 the claimed improvement).
IDS Fees and Certification
Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003) (listing of the inventor’s own prior patent in an IDS does not make it available as prior art absent a statutory basis); 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).”).
Individuals Under Duty
Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003) (listing of the inventor’s own prior patent in an IDS does not make it available as prior art absent a statutory basis); 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).”).
Citations
| Primary topic | Citation |
|---|---|
| Anticipation/Novelty Optional Claim Content | 35 U.S.C. § 102 |
| IDS Fees and Certification Individuals Under Duty | 37 CFR § 1.56(b) |
| Jepson Format Claims | 37 CFR § 1.75(e) |
| IDS Fees and Certification Individuals Under Duty | 37 CFR § 1.97(h) |
| Jepson Format Claims | MPEP § 608.01(m) |
| Jepson Format Claims | Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984) |
| Anticipation/Novelty Optional Claim Content | Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988) |
| Jepson Format Claims | In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982) |
| Claims | In re Nomiya, 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2129 — Admissions as Prior Art
Source: USPTO2129 Admissions as Prior Art [R-07.2022]
I. ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ARTA statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). Where the admitted prior art anticipates the claim but does not qualify as prior art under any of the paragraphs of 35 U.S.C. 102, the claim may be rejected as being anticipated by the admitted prior art without citing to 35 U.S.C. 102.
However, even if labeled as “prior art,” the work of the same inventive entity may not be considered prior art against the claims unless it falls under one of the statutory categories. Id.; see also Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (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.”).
Consequently, the examiner must determine whether the subject matter identified as “prior art” is the inventor’s own work, or the work of another. In the absence of another credible explanation, examiners should treat such subject matter as the work of another.
II. DISCUSSION OF PRIOR ART IN SPECIFICATIONWhere the specification 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, 184 USPQ 607, 611 (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 the claimed improvement).
III. JEPSON CLAIMSDrafting a claim in Jepson format (i.e., the format described in 37 CFR 1.75(e); see MPEP § 608.01(m)) is taken as an implied admission that the subject matter of 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 applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910, 200 USPQ 504, 510 (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 inventor’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, 223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910, 200 USPQ at 510.
IV. INFORMATION DISCLOSURE STATEMENT (IDS)Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003) (listing of the inventor’s own prior patent in an IDS does not make it available as prior art absent a statutory basis); 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).”).