At his first meeting of the U.S. Patent and Trademark Office's Patent Public Advisory Committee since taking over leadership of the PTAB last month, acting Chief Judge Nathan Kelley said that the board's July MasterImage decision will encourage more patent owners to try to amend claims.
Many patent owners have complained that the PTAB has made it too difficult to amend claims in AIA review, because of a rule that amendments will be granted only if it is shown that the new claims are patentable over the prior art of record, as well as prior art "known to the patent owner."
The MasterImage decision clarified that contrary to what some observers have speculated, prior art known to the patent owner does not encompass all prior art in existence, but only prior art that the patent owner is required to disclose under its duty of candor and good faith.
On Thursday, Kelley said, "hopefully that gives people a little bit more of a sense of comfort when they make such a motion."
"What I have heard is not so much the story that it's very difficult to get [amendments] granted, because in fact we haven't see a huge number of them," he said. "It's that practitioners found it very difficult to say what they thought they had to say in that motion, that they didn't want to make that express statement and that was sort of holding them back."
With the MasterImage decision, the board wanted to be as clear as possible that patent owners need only show that their proposed amended claims are patentable in view of prior art they know about, "but beyond that, you don't have an affirmative duty to search the prior art and go find for us something that you're not aware of."
"You should perhaps not be so worried about a reference that you don't know about that is sitting in a subsidiary's office somewhere desk drawer," he said. "That's not something you know about, that's not something that would be under your duty of candor as an advocate at that moment when making the motion. That's what we wanted to clarify."
The USPTO issued a package of proposed rules Wednesday making changes to some aspect of AIA reviews, but not amendment practice. But the office said it would continue to improve and refine the practice through opinions like MasterImage.
Kelley, who had been the USPTO's solicitor, was tapped to lead the PTAB in an acting following the departure of former Chief Judge James Smith, who said in May that he was stepping down after leading the board through the implementation of the AIA review process.
Kelley praised his predecessor at Thursday's meeting, saying he had "big shoes to fill."
"Chief Judge Smith did really a fantastic job," he said. "It was a world-class organization that he came to and he basically had to double down to get ready for the AIA and did a marvelous job with that. I've taken over as much as I can at a time when there's a lot to do but everything is in place to get it done."
Kelley said he cannot forecast what will happen with the process of selecting a new permanent chief judge, which he said is ongoing but that he is not involved.
--Editing by Chris Yates.
