If you thought Shockwave Medical was going to be your ticket to slip Applicant-Admitted Prior Art (AAPA) into an inter partes review (IPR) as a way to patch the holes in your prior art… sorry, party’s over.
As a quick refresher, Applicant-Admitted Prior Art (AAPA) is when an inventor, during the patent application process, openly admits that certain technology or features were already known before they filed. These admissions can be used as “prior art” — basically, evidence that an invention isn’t new.
Inter Partes Review (IPR) is a trial-like process at the USPTO where you can take a swing at knocking out a patent using earlier patents or printed publications — cheaper than full-blown litigation, but still a real fight.
So with those refreshers in mind, in the Shockwave case, the court seemed to say that AAPA could be used in IPRs to fill in missing pieces of a challenge — as long as petitioners didn’t explicitly call it the “basis” of their argument. This looked like it might open the door for more creative use of AAPA in IPR petitions.
What’s the new USPTO position?
On July 31, 2025 — just two weeks after the Shockwave decision — Acting USPTO Director Coke Morgan Stewart issued a memo saying the USPTO will strictly enforce a rule (37 C.F.R. § 42.104(b)(4)) requiring petitioners to point to where each claim element is found in actual prior patents or printed publications.
That means you can’t rely on AAPA, expert testimony, “common sense,” or other general knowledge to supply missing claim limitations in your petition — even if you try to finesse the wording.
Key points:
- Applies to any IPR petitions filed on or after September 1, 2025.
- Reverses more lenient 2020 and 2022 USPTO guidance that had allowed some AAPA use.
- The strict rule applies at the petition stage (before the IPR is instituted) but may not affect what happens after the review is underway.
In short: If you’re challenging a patent in an IPR after September 1, don’t count on applicant admissions or “common knowledge” to fill gaps — you’ll need hard, published prior art to back every single element of your challenge.