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McKool Smith principal Brett Cooper provided commentary to WIPR's article "USPTO Clarifies Rules on Prior Art at PTAB Word IP Review." The article reported that the US Patent and Trademark Office (USPTO) recently clarified the challenged patents cannot form the basis of inter partes review proceedings. Brett said, the guidance “persuasively presents why statements in one’s own patent cannot be prior art because your patent cannot invalidate itself. However, the statements in the patent on prior art are useful (as are many types of evidence) to the general knowledge of a person of ordinary skill in the art as well as filling in ‘voids’ in obviousness combinations. In other words, those prior art statements are usable, they just do not qualify by themselves as invalidating prior art. And importantly the guidance makes clear that they are not somehow blocked from other usage just because they are not prior art under the statute.” Read the full article here.


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