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Here’s a clear, plain-language breakdown of what the USPTO’s new policy means, based on the detailed memo (dated July 31, 2025) and a recent Reuters summary:
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What Happened?
New Rule Starting Sept. 1, 2025: The USPTO will no longer allow patent challengers to use something called AAPA (Applicant-Admitted Prior Art) or general common knowledge to fill in missing parts of a patent claim in an IPR ("Inter Partes Review"). From that date forward, challengers must rely only on published patents or printed documents.
Why the Change: This update brings USPTO practices in line with federal court rulings—specifically, in the Qualcomm v. Apple cases—which said that AAPA cannot be used as part of the foundational basis to cancel a patent claim, even if it's combined with traditional published prior art.
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Understanding the Legal Background
To make sense of the new policy, let’s walk through the key legal developments:
1. What is AAPA?
When someone files a patent, they often describe what they knew from earlier inventions—this part of the patent is called Applicant-Admitted Prior Art, or AAPA.
The debate has been whether challengers in IPRs can use those admissions to argue that a claim isn't patentable.
2. Court Rulings (Qualcomm I & II):
Qualcomm I (Feb. 2022): The Federal Circuit said that AAPA can't count as the basis of a patent challenge—only real prior art documents (patents or publications) can. However, AAPA could sometimes be used to supplement those documents, for example, to help show why someone skilled in the field would combine elements or understand a claim.
PTAB’s Response: After Qualcomm I, the USPTO introduced an “in-combination” rule: If AAPA was used with a real prior art reference, it could be included—but not as the main basis.
Qualcomm II (April 2025): The Federal Circuit rejected the “in-combination” rule. The key test: Was AAPA explicitly listed as part of the basis in the challenge? If yes—even if combined with prior art—that’s not allowed. The Board must not rely on it.
3. USPTO’s 2025 Memo (July 31, 2025):
This memo tells the Patent Trial and Appeal Board (PTAB) to strictly enforce rule 37 C.F.R. § 42.104(b)(4), which says a challenger must clearly show where each part of the patent claim appears in prior art patents or printed publications.
Essentially, you can't fill in gaps with AAPA or common sense; it has to come from real external documentation. This replaces earlier, looser guidance.
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What This Means for You
No More Filling Gaps with Admissions or Expert Opinion: If you're challenging a patent, you must show each claimed element is found in a published patent or printed publication. AAPA or general knowledge can't do the heavy lifting anymore.
— Example analogy: You can’t say, “Well, the inventor admitted this was known.” You have to point to an old patent or paper that shows it.
Greater Clarity & Fairness: This change gives patent owners more confidence: they won't lose claims based on their own admissions. It also clarifies what challengers must do—get real, documented references.
Legal Landscape Update: This is one of the sharpest limitations on AAPA in years. It’s tighter than even the Federal Circuit’s rulings, signaling the USPTO’s preference for clear-cut, document-based challenges.
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At a Glance
Before (pre-September 2025) After (post-September 1, 2025)
AAPA could be used as background or even gap-filler AAPA cannot be used to fill claim-element gaps
PTAB sometimes accepted AAPA in combination PTAB must reject unless every element is in prior art
Interpretation varied based on court decisions Strict enforcement of rule 42.104(b)(4)
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Bottom Line
Starting September 1, 2025, if you're challenging a patent in an IPR, you must rely exclusively on published patents or documents to show each part of the claim exists. You can no longer lean on statements from the patent itself (AAPA) or general knowledge to fill in any missing pieces.
-Yes — this change does benefit Qualcomm (and companies in a similar position as patent owners). Here’s why, in plain terms:
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1. The Qualcomm v. Apple backdrop
Apple had used AAPA (statements inside Qualcomm’s own patents) to argue that some of Qualcomm’s claims were obvious.
The Federal Circuit said: No — you can’t use Qualcomm’s own admissions as the “basis” of a challenge.
That ruling helped Qualcomm keep its patents alive.
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2. The new USPTO rule (Sept. 1, 2025)
Now the USPTO has gone further: no one can use AAPA or “common knowledge” to fill in missing pieces of a challenge.
That makes it harder for challengers like Apple to attack Qualcomm’s patents.
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3. Why it helps Qualcomm
Qualcomm has a large patent portfolio in wireless, chips, and communications.
With this new rule, challengers must find real published prior art for every element of a patent claim.
They can’t lean on Qualcomm’s own words in its patents to close gaps.
That means more of Qualcomm’s patents are likely to survive IPR challenges at the USPTO.
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4. The flip side
This isn’t just a “Qualcomm rule” — it helps all patent owners.
But because Qualcomm has been a frequent target of IPRs (especially from Apple and other device makers), it stands to gain more than average from the stricter standard.
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? Bottom line: Yes, the change benefits Qualcomm by making it harder for rivals to knock out its patents in IPR proceedings.
Would you like me to show you an example—say, how an Apple challenge against a Qualcomm patent would have been easier before the rule but much harder after? |
