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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."
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.
[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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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