No Duty to Discuss Closest Prior Art…But you Probably Should Anyway

In implementing the Federal Circuit’s In Re Aqua Products’ holding, the Patent Trial & Appeal Board (PTAB) explains that “practice and procedure before the Board will not change.” And that, “[t]he Board will continue its current briefing practice as to the types, timing, and page limits of briefs.”

As pointed out previously, removing the burden from the Patent Owner Motion to Amend will aid the PTAB in granting far more motions, but ultimately, amendments are not expected to be any more attractive, or common.

While the Board explained that the burden will no longer be placed on Patent Owner’s, an important caveat is that the Duty of Candor still applies. In other words, while a Patent Owner is no longer required to discuss the closest prior art known under Idle Free, it maybe a best practice to do so anyway.

As explained in the notice (here):

" [U]nder 37 C.F.R. § 42.11, all parties have a duty of candor, which includes a patent owner’s duty to disclose to the Board information that the patent owner is aware of that is material to patentability of substitute claims, if such information is not already of record in the case.

Any claims surviving amendment at the PTAB will almost certainly face inequitable conduct challenge. As such, patent owners may want to consider creating some type of record in this regard.

Finally, the Board has remained flexible in granting additional briefing and timing to those patent owners that have reconsidered amendment options, or had pending motions at the time of the Aqua decision.

Scott A. McKeown is an author of the Patents Post Grant.