How can an applicant’s own work be considered prior art through admissions?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs 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. An applicant’s own work can be considered prior art through admissions in certain circumstances. According to 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.” This means that if an applicant characterizes their own work as prior art, it can be used against them in the examination process. However, it’s crucial to note that: The admission must be clear and unambiguous The work must actually qualify as prior art under the relevant statutes (e.g., 35 U.S.C. 102 ) The examiner should consider the context of the admission Applicants should be cautious when describing their own previous work in patent applications to avoid unintentional admissions of prior art. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Admission of Prior Art Must Be Considered for Anticipation and Obviousness MPEP 2129 Admission of Prior Art as Anticipation and Obviousness Determination MPEP 2129 Permitted Inventor’s Own Work Not Prior Art Without Statutory Basis MPEP 2129 Prohibited IDS Listing Does Not Admit Prior Art MPEP 2129 Examiner Must Determine Prior Art Ownership MPEP 2129 Required Admitted Prior Art Anticipation Without 35 U.S.C. 102 MPEP 2129 Permitted Inventor's Own Work Not Prior Art MPEP 2129 Recommended Specification Must Identify Prior Art MPEP 2129 Preamble Not Admitted Prior Art Without Reason MPEP 2129 Subject Matter Treated as Another's Work MPEP 2129 Recommended Other Related FAQs 5 FAQs Collapse What constitutes an admission as prior art in p...