Patent Board Sets Precedent for Prior Art in Examiner Appeals

Applicants challenging an examiner’s decision not to grant a patent need to prove that evidence wasn’t easily accessible to save their invention, under a precedential Patent Trial and Appeal Board ruling.

In designating the decision, Ex parte Grillo-López, as precedential, the Patent and Trademark Office tribunal clarified that an earlier precedent on evidence requirements in certain administrative patent challenges doesn’t apply to patent examination proceedings.

Under the new precedential decision, the burden is on the applicant to prove evidence wasn’t publicly available. By contrast, challengers trying to kill existing patents in inter partes reviews at the board must ...