Can admissions be used as a basis for establishing a substantial new question of patentability in ex parte reexamination?

Admissions, per se, cannot be the sole basis for establishing a substantial new question of patentability in ex parte reexamination. However, admissions can be used in combination with prior art patents or printed publications. The MPEP states:

“An admission, per se, may not be the basis for establishing a substantial new question of patentability. However, an admission by the patent owner of record in the file or in a court record may be utilized in combination with a patent or printed publication.“

It’s important to note that:

• Admissions can be used to determine the scope and content of prior art in conjunction with patents and printed publications
• Admissions must stand on their own; supplementary information defining the admission is not allowed
• Third parties cannot submit admissions made by the patent owner outside the file record or court record, unless they have been entered into a court record

To learn more:

• admissions
• substantial new question of patentability
• ex parte reexamination
• prior art