Ex parte Lin, Appeal No. 2009-4275, Application No. 10/255,216 (BPAI October 30, 2009)
The Examiner rejected Lin’s patent application for failure to comply with the best mode requirement of 35 USC § 112p1. The Board reversed that rejection because Lin had not disclosed any embodiments. “The best mode provision of 35 U.S.C. § 112 is not directed to situations where no mode has been set forth, and therefore we cannot sustain this rejection.” (Citing Spectra-Physics and In re Glass)
Although Lin won that argument, the board affirmed parallel rejections of lacking enablement, utility, and definiteness.
Under the Federal Circuit’s 2002 precedent of Bayer v. Schein Pharma, the best mode requires “actual disclosure regardless of whether [the best mode] would be within the knowledge of one of ordinary skill in the art.”
The “secret” that makes the patented process/thing better that the one claimed is only a monopoly for as long as somebody doesn’t figure out what it is.
That’s correct, but sometimes nobody can ever figure out the trade secret. I think you understand what the policy behind best mode is. You simply disagree with it.
Luke, is Curious reading “derives” into your “uncovers”? I couldn’t understand the curious remark but, with your reply, I am thinking this is where the difference of understanding lies.
Surely nobody is supposing that the later of two independent inventions of the same thing is blocked from getting a valid patent, if the earlier inventor, say, Dr Dolland, keeps his invention locked in his closet.
Or are they?
Luke writes “a rival who does uncover the trade secret should be able to get their own patent on that former trade secret”
But is the rival the “inventor” of the trade secret?
Luke responds:
Certainly, in terms of what is an “invention” under patent law (I have no truck with those that claim something can only be invented once, and only once). An invention is something that is novel (and non-obvious yadda yadda) *over the prior art*. A trade secret isn’t part of the prior art, since it stands apart from it, unknown to the world at large.
That’s one of the risks of relying on a secret – you haven’t contributed to the stock of human knowledge by secreting it, so have little recourse when somebody else rediscovers it (i.e. reinvents it).
Cheers, Luke
Luke writes “a rival who does uncover the trade secret should be able to get their own patent on that former trade secret”
But is the rival the “inventor” of the trade secret?
I would add that a rival who does uncover the trade secret should be able to get their own patent on that former trade secret. Sure it may be “blocked” by the existing patent, but that is a situation that happens all the time, trade secret protection or not.
Cheers, Luke
Just Visiting said:
“Best mode is about divulging things that *would* be monopolized by exploiting them commercially as trade secrets, while still receiving a patent that would block use of the trade secret should it be uncovered.”
I still don’t see it. *Why* should these things be divulged? Why is it important that such a trade secret not other IP protection. After all, it happens all the time with patents and copyright in say the software field. MaxDrei says it’s like having your cake (trade secret monoploly protection) and eating it too (a patent monopoly), but these monoploies are monopolizing *two different things*.
The “secret” that makes the patented process/thing better that the one claimed is only a monopoly for as long as somebody doesn’t figure out what it is, sine it isn’t patented. And if it is truly important, then it is likely a rival will figure it out on their own, given enough incentives – or the patent will be vulnerable to lack of utility if it is in fact required to make the claimed subject matter work.
So why should one’s knowledge about process/thing X have to be divulged to the public when one is claiming Y?
Why is “receiving a patent that would block use of the trade secret should it be uncovered” seen as such a problem?
Cheers, Luke
That said, Noise (thank you), there’s even less reason why any thinking filer would deliberately leave out its Best Mode, even when there is no statutory requirement to include it.
So, in today’s reality, in which there are no secrets any more, why does US law still need a Best Mode provision?
MaxDrei,
Trade secret has its inherent risks, that is, there is no (or minimal) protection for a secret. If the secret gets out or is independently discovered, you may be left with nothing, or even left without the ability to practice your own secret (for example, someone else patents it and you cannot reach the 273 defense – perhaps not a method). In addition, if you do maintain the item as a trade secret for any length of time, you are barred from patenting it at a later date (suppression rule).
Visiting, many thanks. I see the theory now. You shouldn’t be allowed to have your cake, and eat it too.
But is it working, in the real world?
That is to say, does US law achieve your goal, and ROW BestMode-free law fail to achieve it? Me, I haven’t noticed any difference, in practice. And that’s for the reasons I mentioned earlier, namely:
1) Usually, it’s too risky to hold back the Best Mode, but
2) My ultra-valuable trade secrets I’m going to keep as trade secrets, with or without a Best Mode law.
“Why should a patentee have to divulge things that are not being monopolized?”
That’s not an accurate summary of the goal for best mode.
Best mode is about divulging things that *would* be monopolized by exploiting them commercially as trade secrets, while still receiving a patent that would block use of the trade secret should it be uncovered.
I don’t understand something here. It was said by Judge Rich that the best mode is to stop inventors getting patents while at the same time concealing (some) embodiments that they have conceived. (taken from the Dowd paper linked to above), and that this is part of the quid pro quo of gaining the patent monopoly. But Dowd (or anybody else for that matter) doesn’t say *why* that is in fact desirable.
Why should an inventor be forced to divulge information in a patent that the patent isn’t claiming – i.e. getting a monopoly on? That doesn’t sound like quid pro quo to me. That sounds like two quids for a pro. Why should a patentee have to divulge things that are not being monopolized? I don’t see much discussion being directed to this, but that is the core reason for the best mode’s existence.
Cheers, Luke
“To which grown up art does cold fusion belong?”
Thermodynamics
To which grown up art does cold fusion belong?
The lesson here is that a PTO examiner should not make a best mode rejection until the applicant says, “I ain’t telling you my best mode; I’m keeping that as a trade secret.”
Here the examiner made a “conditional” rejection. Basically, the OA said assuming the applicant does know how to make a working embodiment, then he must have withheld it ’cause this disclosed *$%%$# doesn’t work.
The BPAI instead took position that until you prove you can enable cold fusion, we are not going to conclude that you have such an embodiment in your desk drawer.
Its OK 7, if you find yourself agreeing with Mooney for long you will happily fall on your own sword without assistance…
Ah-ha. at last we have a valid reason for the Best Mode law – to save inventors from themselves.
many years ago it took a lot of prodding to get my client to tell me his best mode.
he is lucky he did, because the only protection available turned out to be for his best mode.
Lorenzo, if I read you right, you advert to the age-old dilemma every drafter faces: how much to teach and how much secret know-how to hold back. Teaching gives it away, but witholding runs the risk that you are found less than enabling (on the narrow subject matter which might be all you can get), and the further and more alarming risk, that the other fellow gets a patent, on exactly that which you held back.
It’s (in principle) the same age-old dilemma, is it not, with or without Best Mode, and whether FtI or FtF?
MaxDrei, I agree with your posts for the most part. However, I don’t believe that someone else could very often benefit from a patent having concealed the best mode known to the inventor. From my (vague) recollection of case law, best mode issues often hinge on something that is only peripherally related to what is recited in the claims, yet turns out to have been very useful for someone trying to put the invention into practice to know. It may not even be something that the inventor would have included in a claim, even if it were disclosed in the specification. Enablement focuses on the claims; best mode doesn’t.
Also, by “barely workable,” I meant more in the commercial sense. At least in some arts, claims can be adequately enabled with a disclosure of something that is clearly not going to be commercially viable. Maybe it’s simply not mass-producible, for example. I have seen mechanical inventions where some of the parts of the disclosed embodiment have shapes that can’t be produced by conventional machining operations. But if the inventor knows of a way to make a part that can be produced using conventional operations, should he be required to disclose it? Sure, it may occur to someone skilled in the art that parts shown crudely in a patent may need to be re-designed for producibility, but if the inventor already knows of a way to do it that he thinks is best, I can see the logic in requiring him to disclose it. The presumption would be that the inventor is the person most familiar with the invention, so his thoughts are likely to be more useful than others’ thoughts.
All that said, I’m not in favor of a best mode requirement. I agree that enablement should be enough to support the grant of a patent.
I just agreed with MM.
Someone shoot me.
“Congratulations to primary examiner Johannes Mondt for his thorough reply to the applicant’s appeal brief. Cases such as this that involve fundamental thermodynamic principles can be very difficult.”
As MM would say: That’s how we roll in the “grown up” arts.
Not 6 The relevant passage (that Dennis didn’t quote above) says that in cases where no mode has been disclosed, *the application fails for lack of enablement*. That makes sense. Sounds like the BPAI should just have said, “you didn’t disclose any mode, so you fail for lack of enablement, hence the best mode rejection is moot”, rather than reversing on that particular point.
That makes sense.
Lorenzo, as somebody (me) keeps on pointing out, of course you can CONCEAL, but then you take the risk that somebody else can come along and patent what you have willfully concealed (at least they can under FtF, everywhere except the USA). Who can afford to take that risk?
Don’t you see any tension between your “adequately enable” and your “barely workable”? Are you saying that “enablement” is unworkable, as a test of patentability, because nobody knows whether the inventor is or is not adequately over the barely threshold?
Words. They are so useless for defining a clear bright line, eh? “Obvious” is useless. “Enable” is useless. There’s no hope for patent law. We’re all doomed, doomed.
@Body Punches: I believe that “best” simply means, subjectively, what the inventor BELIEVED was best, if the inventor in fact had a specific way in mind of doing something and believed that it was better than others that he also knew of. In that event, the inventor is required to make sure that it is disclosed in the patent application. It may not have been a very good way at all, objectively speaking, but if the inventor knew of a particular way and BELIEVED it was the way it should be done, he’s required to disclose it. At least that’s my understanding of best mode.
As someone remarked above in the chemical arts context, it’s entirely possible to adequately enable one’s claims so that others skilled in the art can make and use some barely workable embodiment of the invention, but CONCEAL some bit of information that is the key to a truly commercially viable way of putting the invention into practice. At least that’s the argument in favor of a best mode requirement.
The “best mode” requirement goes too far.
As long as the claims are definite in scope and are enabled, that should suffice. Leave it to others to determine what is their “preferred mode”.
I’ve never really seen an intelligent interpretation of the term “best” as used in this context. Fastest? Cheapest? Most efficient? Recoverable inputs? Most reliable? Reversible process? Interoperable? Some combination of factors? etc. etc.
I haven’t read the case yet, either, but my understanding is that “best mode” is all about “concealment.” The purpose is to prevent an inventor from concealing the best way he knows to put the invention into practice, if he in fact knows of a best way. The best mode inquiry is also not as focused on the claims as the enablement inquiry; it’s my understanding that an inventor can run afoul of the best mode requirement if the inventor knows of, yet conceals, a way of implementing some aspect of the invention that the inventor believes makes the embodiment work particularly well, even if that aspect is not something explicitly brought out in the claim language. It’s also my understanding that a best mode rejection is almost never appropriate in ex parte examination because the examiner almost never has any evidence that an inventor knew of a way of implementing something that the inventor believed was best yet concealed it. The inquiry almost exclusively comes up in the context of litigation, where the accused infringer can probe what the inventor believed at the time the application was filed.
Thanks Mark. The relevant passage (that Dennis didn’t quote above) says that in cases where no mode has been disclosed, *the application fails for lack of enablement*. That makes sense. Sounds like the BPAI should just have said, “you didn’t disclose any mode, so you fail for lack of enablement, hence the best mode rejection is moot”, rather than reversing on that particular point.
The argument against “best mode” is that it can waste a lot of costly extra litigation deposition time trying to probe the inventors state of mind and the generation of arguments over what was “best.”
The argument FOR a best mode requirement is that the fundamental public disclosure purpose of patents could be effectively thwarted [at least in some pharmecutical or chemical cases] if the only commerically practicable way of making the invention is effectively concealed from the public rather than disclosed in the patent, thus giving the applicants trade secret protection on top of patent protection.
If Lin did not disclosed any embodiments, what did Lin disclose and why couldn’t any of that be considered “an embodiment”? I would be grateful to anyone who provides a quick summary of what Lin disclosed.
Agreed, Just Visiting. But you know my attitude. I’ll pick up any stick that’s lying around, however ill-adapted it might be to the task in hand, to beat the dead donkey.
MaxDrei,
I believe this case shows only that the PTO is going to treat cold fusion the same way it treats perpetual motion machines. I don’t believe it illustrates anything about best mode being a good or bad policy.
Perhaps a case where the PTO does not take the position that the underlying science is junk would be more illustrative.
If the CAFC really followed stare decisis and had followed its much earlier case law [in which a “best mode” violation meant that at the time of filing the inventors had two complete embodyments for what was being CLAIMED and had deliberately left the best mode out of the spec] their current case law on “best mode” would not be in such a mess.
Isn’t this case unusual from the standpoint of the “cold fusion” subject matter. Would a mechanical or chemical invention without such an unusual type of subject matter be rejected in the same manner?
Perhaps this thread will go some way towards revealing to Americans that the cherished “Best Mode” requirement serves no useful purpose but does serve the worse than useless purpose of rendering patent law more complicated than it needs to be.
The “deal” between inventor and public is that Inventor gets exclusive rights, in return for a disclosure of how to enable, throughout the area monopolised. Why should the public give anybody a monopoly for subject matter that can’t be enabled. Who cares what Mode the inventor chooses for himself? If he fails to disclose the best mode he risks another later filer patenting it for himself.
No wonder the draft Bill contemplates dropping the unique Best Mode requirement.
Not 6
The Dowd article linked to above suggests there is no requirement to have a best mode, but if you do have one, you have to disclose what it is (Bruning v Hirose). I haven’t read that case yet, but if that’s true, it provides a reason for the BPAI’s admittedly weird logic.
not 6
I put a copy of the decision up on Google docs. Here is a link link to bit.ly
Congratulations to primary examiner Johannes Mondt for his thorough reply to the applicant’s appeal brief. Cases such as this that involve fundamental thermodynamic principles can be very difficult.
can’t access this decision – BPAI decisions are offline right now – but how does one not run afoul of the best mode requirement by disclosing no modes? sounds like a no-brainer (as in, the members of the BPAI have no brains)…
See this article on Best Mode:
link to 64.237.99.107
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