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

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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