Shockwave Raised Hopes for Using AAPA in IPRs
If you thought Shockwave Medical would let you slip Applicant-Admitted Prior Art (AAPA) into an inter partes review (IPR) to patch holes in your prior art… unfortunately, that party’s over. In other words, creative uses of AAPA just became much harder.
What Is Applicant-Admitted Prior Art (AAPA)?
Applicant-Admitted Prior Art (AAPA) is when an inventor admits during the patent application process that certain technology or features were already known. As a result, these admissions count as “prior art”—evidence that an invention isn’t new.
What Is an Inter Partes Review (IPR)?
Inter Partes Review (IPR) is a trial-like process at the USPTO. Specifically, it lets you challenge a patent using earlier patents or printed publications. It’s cheaper than full-blown litigation, but still a real fight.
How Shockwave Appeared to Loosen the AAPA Rules
In the Shockwave case, the court suggested AAPA could fill in missing pieces of a challenge. However, petitioners couldn’t call it the “basis” of their argument.
Therefore, this seemed to allow more creative uses of AAPA in IPR petitions.
The USPTO’s New Position on AAPA in IPRs
On July 31, 2025 — two weeks after Shockwave — Acting USPTO Director Coke Morgan Stewart issued a memo. It says the USPTO will strictly enforce 37 C.F.R. § 42.104(b)(4). Petitioners must point to where each claim element appears in actual prior patents or printed publications.
You can’t rely on AAPA, expert testimony, “common sense,” or general knowledge to fill gaps in a petition. Wording tricks won’t help.
Key Takeaways for IPR Petitioners
- 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.
Published Prior Art Is Mandatory
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.