A Response to Professor Chiang

By Jason Rantanen

Professor Tun-Jen Chiang's post on best mode (below) argues that Congress must necessarily have intended that patent applicants would not disclose best mode, given that it was aware of the potential consequences of removing litigation enforcement.  Thus, Professor Chiang concludes, Congress not only abolished best mode, but then went about "lying" about it.  I have serious doubts about this conclusion.

Despite being styled as a reply to Professor Sheppard's description of Congressional thought about best mode, Professor Chiang misses the fundamental point of Professor Sheppard's post: that although Congress recognized that removing the litigation mechanism for enforcing best mode might result in reduced compliance, there remained alternative mechanisms – which Professor Sheppard discussed – for encouraging applicants to comply with the best mode requirement.

While I personally question the efficacy of the alternate mechanisms for enforcement – which rely primarily on criminal sanctions that, historically at least, have been rarely employed even to deal with more significant misconduct – it is clear that Congress has a higher view of these types of enforcement mechanisms than I do, especially given its treatment of inequitable conduct in the America Invents Act.  Thus, I find it difficult to accept Professor Chiang's dichotomy that either Congress must have been "dumb" or "lying," as well as his analogy to a child with matches.  This issue is far more complex than such an oversimplification allows, and it is entirely reasonable (and probably far more accurate) to recognize that Congress was attempting to balance a difficult issue: the costs of patent litigation versus the need or desire for disclosure of best mode, and elected to proceed by relying on alternative enforcement mechanisms that, while perhaps less often enforced, might potentially provide equal deterrence through more severe sanctions.  If one must use an analogy, it is more similar to giving a teenager a car, explaining that speeding might result in a criminal penalty, while nevertheless providing reassurance that you will not take away the car if he or she is caught speeding, than it is to a child with matches.

77 thoughts on “A Response to Professor Chiang

  1. I’m wondering now, how much wool you’ve had pulled over your eyes,… Are you a student?

    LOLZ

    MaxDrei being busted for being just a shill and attempts a putdown by intimating that the other person is a “student.”

    The irony of this given Max’s usual BS line of “I am here to learn.” is rich indeed.

    Anytime I have to choose between such a “student” as Simple Questions and MaxDrei, I would go for the “student” everytime.

    if we cannot contribute anything useful on that front, we should leave the space for others who can.

    You realize of course that if the vocal minority Shilling Crowd actually listened to you, that 80% of the blog posts would be eliminated (60% from the minority, 20% replying to that minority)?

    That would be way way too much space for the Crouch backers.

  2. “…we both know that some who say that are not in fact actually here to learn”

    Do we? No, we don’t. You know it, I don’t.

  3. Simple. Ask yourself, why are we here.

    MaxDrie,

    At the risk of sounding petty and merely squabbling, there are many reasons why people are here.

    Some say they are here to learn. And some of those who say so actually are. But we both know that some who say that are not in fact actually here to learn.

    I wish you well. I have said my piece and I think that you can discern why I think you are here.

  4. Oh, I’ve “stopped learning” have I, Simple. Ask yourself, why are we here. Are you telling me I’m wasting my time here, that there is nothing to learn from this blog? Dennis, can you believe that.

    Are you saying, Simple, that the ones who participate in these threads are the ones who are more set in their ways than the ones who have no interest in blogs? Is that what all your experience tells you too?

    I’m wondering now, how much wool you’ve had pulled over your eyes, over all your years of experience, by outside patent counsel. Have they perhaps been routinely billing you for supposedly writing a different specification for each country in which you file? Otherwise, where are you getting your ideas from? Are you a student?

    But we should stop this. As Anon points out below, this is a patent law blog so, if we cannot contribute anything useful on that front, we should leave the space for others who can.

  5. I am telling myself to allow that you have as much experience as me but, frankly, it’s getting ever harder to do that.

    Mr. MaxDrei,

    I think that you are getting caught up in quantity of experience rather than diversity of experience.

    It is clear to me that you are locked in to the ways that you have done things. It is my experience that this happens quite often when one thinks that they have learned “the best way” and in essence have stoppped learning.

    I think our further conversations will benefit neither of us, so I wish you well.

  6. I’m an anti-’crybaby lawyer’.

    Hmmm, the amount of self-loating presents itself in a very interesting manner in your projections and choices of words, Mr. Mooney.

    At the same time that you aspire to be a lawyer in the real world sense, in the non-government arena, you arouse yourself as you claim to be some sort of champion and denigrator of lawyers who are “crybabies.”

    And yet, you are the single biggest crybaby on the boards.

    You project about these fantastic rates you have and the lack of your enemies to afford these rates, yet your leftist moanings belie any such rates that you may actually earn.

    I usually do not say this to my patients, but you are an amusing and frighteningly twisted individual. You aspire to belong to a caste that you villify, to a caste that has rejected you. Your fixations border on a repressive conspiracy on a Wagnerian level.

    How often were you involved in your mother’s domination theatrics and the sissification of your father? How many men were your father forced to service as you helplessly watched?

  7. All those years paying for Files, many denied. But the ones I did get(CERTIFIED)contained information that said everything but what was true. For 16 Years I was told it was someone else. And now they are claiming they are going to do it for me? Lets put it this way, DON’T YOU DARE. Now that I know who did it and how it was done, and OED already knows it, DON”T DARE! Do you really think the letter from Ivy is tying a Lace. You are going to trip over that one too.
    There is no reason why if I knew that I would not have acted then. Ever time I tried to get an Atty. to help me, his Money and Gangster mind set thwarted my resolve, and I was continually told it was only Lo. And like I said that Card that Robin claimed I don’t know what it is, he said? I will go straight to the DOJ if you think you can pull that! OED then the Courts to tie up all the Laces from the Bankruptcy to the Rape. So little Rich.. you had better “think long and hard” before you try to claim I am incompetent.

  8. And one more thing oh Buddy old Pal. Trying to get it so I get the same thing you stole without a Foreign license… I have news for you Buddy. What I have will leave you in the Dust you made from pounding the Rocks!

  9. Have we been saying the same all the time? Well, my feeling is that I have completely failed to get across to you my experience of drafting for multiple jurisdictions, and of receiving stuff from all around the world for filing and prosecuting in Europe. You do not respond to my invitation to draw a distinction between chemistry/bio cases and engineering, so I take it this is not the issue between us.

    I am telling myself to allow that you have as much experience as me but, frankly, it’s getting ever harder to do that. And with your comment about my small world and your larger one, and my “passable” efforts, up for your examination, this is getting embarrassing. We are not going anywhere, so we had better stop now.

  10. This new FTF Rule is a Dream for the USPTO and the Congress. You see this way the Examiner will never be in trouble for what Someone claims he should have understood, because now there will be nothing for him to Understand.
    Example:
    Joe invented some Apples. When he goes to court he tells the Court I also have Oranges as a best mode.
    They are a lot smarter than you think. But there will be no need for a CIP or any type of Continuation. They may be able to push Applications in huge numbers. And may also need as many Judges to sort out what so and so is claiming as best Mode. But you are wrong in thinking that Large Firms will steal from the little Guy anymore than they already have, which of course is pretty high. the only saving grace here, is get it out, test it, Even go so far as to try to sell it on your own. Then No one can say you didn’t try to Market it. And the Apples and the Oranges will be the courts problems not the Examiners. And that would seem to me, that the Examiners as long as they do the Job they are asked to do, shouldn’t need to pay Dues! Don’t you think? What a Cost Saving feature for all!

  11. Oh my, we are indeed going in circles.

    An application, at least as I was referring to one, was a complete application, including claims.

    If you are changing your claims than you are not filing the exact same application, are you?

    As far as the “direction and template” process, it appears that you are receiving an item already geared to a US filing.

    That is not always the case, especially if you are the one preparing the entire set. My guess is that you do not. That might explain some of our disconnect. And you should be aware that the specifications themselves do not have to be identical. I would think that you would be aware of this, but perhaps your process is not as encompassing as others. I am sure that you do a more than passable job in the realm that you operate.

    Have we been saying the same thing all this time? Or close enough not to matter?

  12. We are going round in circles here Simple. If you want Paris priority, you want the priority document to be identical to the application in suit. One does not have a different priority document for each jurisdiction. Rather, one has one for all. Each time a US corp gives me instructions to file in Europe, there is a US prio filing and a spec for the EPO which is the same as the prio filing. Thank goodness. OK, to meet EPO rules on clarity, we often file fewer independent claims, and dependent ones with multiple dependencies but, otherwise, it’s the same doc. When is it other than this?

    Thus, it ain’t just me that is, according to you, foolish. It’s all my corporate US clients too.

    Over to you. Whatever are you going to write next.

  13. OK,

    I thought that you were saying that you prepare the different applications for that “same invention” in exactly the same way for very different legal regimes.

    That would be foolish, wouldn’t it?

  14. Simple, all I’m saying is that the right to priority under Paris is dependent on i) the FIRST filing in a Paris Convention country and ii) only given for the “same” invention. That’s all.

  15. MaxDrei,

    You ask what are you missing, yet boldly state “The specification and the drawings would be the same for both.

    Why? I think that I am missing something from your process. Something fundamental.

    It’s as if you are ignoring the point that different regimes of law should be treated differently in the preparation of the applications.

    You seem to want to have a very stark difference – like it one is black and one is white. Each has its flavors based on the laws of the region. It is more like shades of grey.

    I guess I simply don’t buy into the “how to write a ‘universal’ patent application,” unless you are thinking that that universal patent application serves as the baseline version. I don’t see any way around the fact that each legal regime requires some work to tailor an application properly to that regime.

    Do you think that a “universal application” is the proper way to go?

    Lastly, as I mentioned, the timing is coordinated, so please don’t confuse the issue with bringing “different” first priority filings into the discussion for goodness’ sake.

  16. Readers help. What do you think? Neither 6 nor Max is a US attorney at law who has been through law school and studied the basis of criminal law. But, in any case, I think to discuss the question how to test whether the statutory requirement of Best Mode (as defined by 6) is or is not fulfilled in examining any particular patent application, Mr Kappos needs not just a brace of lawyers but, in addition, a resident philosopher and a resident psychologist. No wonder he has already announced that those resources will not be forthcoming.

  17. Ok, Simple, that’s good. So, taking it further, let’s set aside all issues about dates and multiple filings and just discuss different versions of the same docs, for simultaneous filings for different countries.

    I concede that in-house, a pharma concern will write different claim sets for different countries. But instead let us take a stapling device or a stent. How many different versions of the claims do you envisage. For me, it’s two. One for USA and one for ROW. The specification and the drawings would be the same for both.

    I wonder, are you of the school that has for ROW a specification that says what the invention is and what it does, and for the USA one that doesn’t? How else might your various work products differ?

    These days, there are innumerable conferences wherein somebody is speaking on how to write a “universal” patent application. We know there are different priorities, country by country, but don’t we tick all the boxes in one single work product?

    How many priority date defining first PTO filings do you make, for goodness’ sake?

    What am I still missing, please.

  18. MaxDrei,

    You may have misunderstood me (and I may have misunderstood you).

    I am questioning your post that you write only one application. There may be a baseline draft of the invention, but I have never heard of anyone simply taking that same baseline and filing in the different countries. There are always adjustments made from the baseline to the US, to Canada, to EP, to China and so on. Each version is primed for the laws of the country or area that it is aimed at.

    The timing is coordinated so there is no issue of world-wide novelty, so that “one shot only” has nothing to do with my question.

    In short, nobody (I know) drafts just once. Do you really mean that you only offer one work product for your client no matter which legal regime the application is headed for?

  19. “What the inventor thinks can never ever be the same as the disclosure content of the application as filed. ”

    If you aren’t a tard it can. Although, I will understand if you simply say you are.

    “So, whatever the “Best Mode” is, it is NOT what the inventor thinks.”

    “thinks” “subjectively believes” whatever the f you want to say Max. Stop being a tard already k?

  20. Why one only, Simple? Frankly, Simple, I’m amazed at the question.

    It’s because of First to File, because of world-wide novelty and because of the need (in the real world) to rely on the provisions of the Paris Convention, which gives you one shot at it, and one shot only.

    Do you not know that yet? I think you have some studying to do, in the next 18 months, to work out some of the repercussions of “First to File”. And it’s important you do, because the US AIA version of First to File is more aggressive. and less forgiving, than ROW FtF.

  21. David Kappos in today’s AIPLA phone conference said that congress had indicated that best mode was not important and the PTO would not waste resources on best mode determinations.

  22. I’m sure the law firm will still be paying for its mistake

    That law firm just spent M$20 to save over M$200.

    Will be paying for?

    More like receiving a nearly 10 to 1 dividend.

    I wish that all of my “will be paying for” were like that.

  23. Yeah but, 6, everybody drafts just once, and that once has to serve in all jurisdictions, including the USA.

    Why? Why would you consider drafting a patent application only once that actually must meet completely different sets of patent laws?

  24. Sorry 6. It just ain’t that simple. What the inventor thinks can never ever be the same as the disclosure content of the application as filed. So, whatever the “Best Mode” is, it is NOT what the inventor thinks.

    Perhaps it is what the inventor succeeds in communicating to another sentient being. But that is another matter, as the old cartoon sequence of the swing on the tree branch “intends” to point out.

  25. Yeah but, 6, everybody drafts just once, and that once has to serve in all jurisdictions, including the USA.

    That said, one’s drafting style is of course informed by what is needed by the law at home, in one’s own jurisdiction.

    I concede, abolition of Best Mode in the USA might result in every patent drafter, all around the world, now switching to a different style in which Best Mode is deliberately withheld. But it won’t change my drafting style, and I think I’m typical.

    Please, no hat doffing to Germans. Instead, ask yourself, who wrote the European Patent Convention, and who writes its evolving caselaw? That is what drives the German drafting style

    Thanks for your comment: it made me think.

  26. How do I know? The entire world that benefits from EPO etc. pubs is getting scammed by their failure to include the best mode because of a lack of a req. Although specifically, the people in that jurisdicion, england, germany or what have you are getting even more scammed.

    Except that the germans tend to disclose things in a very straight forward fashion that is understandable and quite reasonable in so far as I’ve seen amongst my apps that originate with them. My hat is off to the german fellows even though they were dic ks back 70 years ago.

  27. “Where does it end? ”

    Precisely where the inventor subjectively believes it to end.

    This isn’t rocket science Max. It is a subjective determination made by the inventor. How hard is that to understand? Inventor thinks to himself, man this would be great to use in x! That’s the best mode. Period.

  28. Look 6, what I know is what I know from my clients, US corporations, patent-savvy, both when I am opining for them on the validity of patents of competitors, and when I am writing their patent applications for them.

    And how do you know who is scamming who?

  29. “which, in real life actual practice makes no contribution to the “bargain” and, instead, is just a feeding trough for lawyers.”

    Max, you are aware that we’re in the business of publishing things here right? Technical information? The more of the details you can get the better. There is no excuse to not require the best mode. ROW is gettin’ scammed on.

  30. Think what you like anon. Your privilege. My thinking comes from my experience since Europe’s prior user right was written in 1973, implemented in 1978 and adopted in the AIA in 2011.

    We in Europe have never had Best Mode. We have ways of compensating for the absence of a Best Mode requirement, when deciding whether or not the disclosure of a patent is “sufficient” and whether something within the ambit of a claim is “obvious”, which you are going to learn, over the next 30 years or so. Let’s talk again then.

  31. sockie the anonsockpuppet:

    You do realize that to a lawyer, this is simply one of many basis that we must cover for our clients, do you not?

    BOO HOO HOO HOOO!!!!!! Prosecuting patents is HARD!!!

    That’s why you get paid more than 95% of the rest of the population (not to mention the world), you whining crxxp.

    Yes, it sxcks when some clever lawyer on the other side works some legal jujitsu and tanks your patent. But seriously: what percent of litigated patents were invalidated for failure to disclose best mode during, say, the last ten years?

    Malcolm Mooney” QQ – very anti-lawyer

    LOL. I’m an anti-”crybaby lawyer”. And you need a diaper change. Unfortunately, you can’t afford my rates.

  32. It’s not loathesome but it is somewhat erroneous. I’m sure the law firm will still be paying for its mistake. That said, Congress did soil itself mightily by its blatant pandering to a single company.

    If I were a pathetic sockpuppet like you, I might say something like “I guess we all know who ‘anon’ works for.”

    But you’d shill for any change in any law that favors any patent. That’s the sockpuppet way.

  33. Agreed, except that the “law firm bailout” is much easier to understand than the “best mode bailout.” I doubt many congressmen understood the ramifications of changing best mode, as well as other parts of the bill, but rather, went along irresponsibly with what powerful constituents wanted. It is the individuals who created the bill that intended to gut best mode.

  34. Courtenay, I have no idea why Congress made itself looks so foolish. But they look absolutely ridiculous.

    Why in the world would they do something so foolish and ridiculous? That is what many of us here are wondering.

  35. Anon, I call it as I see it. If you like, put it this way. The legislator it was, who created the trough. You can’t blame the lawyers for feeding from it. They have to eat to survive. I blame those who cluttered the patent law landscape with unnecessary and unhelpful troughs that people are always tripping up over. OK?

  36. instead, is just a feeding trough for lawyers

    MaxDrei,

    This statement comes across very much like a “Malcolm Mooney” QQ – very anti-lawyer.

    You do realize how little control Lawyers actually have about whether or not this requirement exists, do you not? You do realize that to a lawyer, this is simply one of many basis that we must cover for our clients, do you not? I fail to see the significance you attach to this particular notion in making a claim like “feeding trough.”

    This and your above comment at 4:27 AM only show a negative and unwarranted bias.

  37. Looking in on USA from no Best Mode requirement ROW, it strikes one as a provision that looks like a good idea, and would strike politicians as an indispensible part of the inventor/society patent grant “bargain” but which, in real life actual practice makes no contribution to the “bargain” and, instead, is just a feeding trough for lawyers.

    Take a cook book, full of recipes. Each one is a “Best Mode” as good as the writer can make it. That writer really does want readers to succeed and to duplicate the cake, just as delicious as the writer can bake it. Their reputation depends on it. But can those readers bake it just as well? Of course not, because the essential skill, experience and know-how, to bake the cake in its Best Mode, is simply not in the words on the page. So too, with most any process “invention”. How far do you have to go, to get that Best Mode on paper? A hundred pages? Two hundred? Where does it end? As I say, a goldmine for lawyers and a bottomless pit of legal costs for innovators. Congress just put a floor in that pit and declared the goldmine worked-out.

  38. Thanks Rusty,

    inarguably bribed to get a single law firm off the hook

    Anyone else notice the silence on this particular loathsome point?

  39. You want to try your luck beating him off with the new prior user provisions? Good luck with that.

    MaxDrei,

    You make it sound like that would be a difficult task. I believe that it would be quite the opposite.

    As far as “might fail, likely fail and probably fail” then you got zilzh, you now place yourself in the sky is falling crowd without due reason. A baseline assumption on any patent application is that it “might fail, likely fail and probably fail” if not properly prepared. This can be easily, and summarily, divorced from the Best Mode discussion. As far as the “you got zilch – welcome to the destruction of the traditional Quid Pro Quo due to publication. (There is still the option of non-publication requests, mind you). Also on the zilch factor, you have your (unadvisably and overly) discounted prior user rights. In fact, these prior user rights have just gotten incredibly stronger with the AIA.

    I don’t think you have a strong position to argue from.

  40. Constitutional dictate that a monopoly will be granted only in return for full disclosure of invention particulars that might benefit society in general when the monopoly period expires.

    Mike,

    It does not take a lawyer to read – the “full” disclosure notion you put forth was debunked above. Attempting here to add a “Constitutional dictate” level of importance thus fails.

    As far as Best Mode being a statutory expression, we all know that Congress has full deference on any such statutory expressions, and thus the AIA is a fully legitmate expression that Best Mode is but a token gesture and definitely not at the level that some would place it.

    Whether or not the section could be subject to political attack is quite beside the point. Anything is subject to political attack.

  41. “it is clear that Congress has a higher view of these types of enforcement mechanisms than I do.”

    I disagree. The same Congress that was inarguably bribed to get a single law firm off the hook does not deserve this much benefit of the doubt. One has just as much basis to believe the weaker enforcement mechanisms were merely left as cover by a Congress which fully intended to gut the best mode requirement.

  42. Those specific details Landon. The ones you withhold. Suppose another goes and patents exactly that, and asserts against you. You want to try your luck beating him off with the new prior user provisions? Good luck with that.

    And that app you filed, lacking the very details that make the thing succeed. Without those details, your app might fail 102, will likely fail at 103 and will probably fail on 112. And then you’ve got zilch.

    Still think yours is always a good way to proceed?

  43. . If you have a patent on a manufacturing process, for example, patent it yet withhold the specific details that make it run most effectively. You get the best of both worlds — a patent on the process and trade secret protection over the details that make the patented process commercially viable.

  44. Huh? There are huge advantages to not disclosing the best mode. If you have a patent on a manufacturing process, for example, patent it yet withhold the specific details that make it run most effectively. You get the best of both worlds — a patent on the process and trade secret protection over the details that make the patented process commercially viable. Competitors struggle to make an inferior product, and you sue them for infringement. Yipiee!!

    But let’s be serious, guys. There is NO enforcement of best mode under the new regime. There is no way whatsoever for an examiner to know whether or not the best mode has been disclosed. There would be no basis for an examiner to formulate a rejection. The notion of “disciplinary measures” is also a joke because it applies only to the patent agent, not to the inventor — the person who knows the best mode.

  45. I’m an inventor not a lawyer. But it seems to me that Prof. Sheppard was describing how Congress attempted to reduce
    litigation over best mode issues without abolishing a best mode requirement altogether. That the reluctance to part with best mode is founded on the Constitutional dictate that a monopoly will be granted only in return for full disclosure of invention particulars that might benefit society in general when the monopoly period expires. Best mode is the statutory expression of the Constitutional mandate. Without it, or some equivalent, the section could be deemed unconstitutional, or otherwise be subject to political attack. If that was not the point of her explanation then I misunderstood it.

  46. “But does the PTO examine for best mode now? How could it, except in rare cases, since it is so subjective?”

    Yes.

    It is only done in those rare cases.

  47. But does the PTO examine for best mode now? How could it, except in rare cases, since it is so subjective? And “best mode” has been (will be) eliminated as a requirement for priority. What message does that send?

  48. but in a sub-optimal way. How could B identify the “best mode” in the disclosure

    Logic Error: Best Mode is NOT best in comparison to the art “out there,” but rather best per the applicant’s contribution.

    An applicant can have 50 “inferior” ways, but if each is novel and non-obvious, and meets the 112 requirements ALL are deserving of patents as this promotes the progress by the width of available options.

  49. This is Congress we are talking about. It’s more like a child with matches. And that child can sell legislation to the highest donator.

  50. Lulz. I would lulz soooo hard. Maybe Ned can be the first one, he apparently relishes the thought of not disclosing the best mode, because, well, to him, it being the best mode is sufficient reason to not disclose it as the best mode.

  51. “to recognize that Congress was attempting to balance a difficult issue: the costs of patent litigation versus the need or desire for disclosure of best mode, ”

    Which is simple to do actually, by simply creating a “best mode” section in the spec.

  52. Interesting questions.

    As I recall, it is a legally recognized possibility that the applicant was not aware of the “best mode” of the invention, i.e., there is not always a “best mode” to be disclosed.

    The best mode requirement seems to me to taste a bit like inequitable conduct.

    Yes, that’s because there is a scienter component.

    For example, let’s say Applicant discloses embodiment A+B as the most preferred embodiment (and the data shows it works the best). It turns out that there was an error and it was later discovered by the Applicant that A+B was actually A+C. So, the “best mode” was not disclosed but … the “best mode known to the applicant” was disclosed. The earlier disclosure does not run afoul of the “best mode” requirement.

  53. I have a bit of a philosophical problem with Best Mode.

    Suppose that A obtains an US patent identifying a certain problem, and claims the solution which would be reasonable, and “obvious” (?), for the skilled person .

    B wants to work around A’s patent, and files her own patent claiming all the variants which aren’t covered in the older disclosure. Sure, B’s solutions work too, but in a sub-optimal way. How could B identify the “best mode” in the disclosure, when everyone with the brains of an oyster know that the only really good way to address the problem is A’s solution? Is B withholding information if she files a “me too” patent designed to protect her part of the game? One can’t really write “I know this isn’t a good solution, as it is only “best” in that it circumvents A’s patent. I can’t disclose A’s ‘real’ best mode solution as I couldn’t claim it”.

    The problem isn’t as farfetched as it sounds, I can think know of some cases I worked on. (The US IDS is revealing in disclosing the piece of prior art the applicant is trying to get around).

    I’m also aware of obfuscation tactics in fields like chemistry, deliberate or not. Separate patents are filed for several individual compounds of a given class, but no one can really tell which one is truly effective just by looking at them. Is “best mode” applicable to one application taken in isolation, or is it the applicant’s collective disclosures that are assessed? The best mode requirement seems to me to taste a bit like inequitable conduct.

  54. I’m just trying to imagine the reaction of the sockpuppets when the first patent prosecutor is sentenced to 100 days in prison for failing to disclose best mode. The “Free Mumia” crowd will seem like the world’s most sullen wallflowers by comparison.

  55. It’s even better when his self-loathing seeps through that he his not on the side of the fence that he really wants to be on.

    Bet he just couldn’t cut it and holds that grudge to this day.

  56. Congress was attempting to balance a difficult issue: the costs of patent litigation versus the need or desire for disclosure of best mode, and elected to proceed by relying on alternative enforcement mechanisms that, while perhaps less often enforced, might potentially provide equal deterrence through more severe sanctions.

    I dunno. If the AIA is the best Congress could come up, it seems reasonable to say that Congress was dxmb.

    “Perhaps less often enforced” is perhaps the understatement of the century so far …

    If one must use an analogy, it is more similar to giving a teenager a car, explaining that speeding might result in a criminal penalty, while nevertheless providing reassurance that you will not take away the car if he or she is caught speeding

    I think it’s more similar to giving a teenager who idolizes Mario Andretti a car, explaining that speeding might result in a criminal penalty, and noting that Patrol Officer Dillson is blind in his left eye and spends Thursday-Sunday afternoon at the donut shop.

  57. TJ: “…if Congress…then it is charmingly misguided and doesn’t know what it is doing.”

    Now THAT is something that is VERY easy to believe.

  58. Jason, it might be that we need to persuade Congress that criminal penalties are not effective in this area. But then one must conclude that Congress does not already know this and thus does not know the probable consequences of its new law. As I read Professor Sheppard’s post, this is exactly what the critics have been saying and what she is trying to refute, and I am trying to respond to her refutation by showing it leads to an even worse inference (that if Congress knows of the consequence, it intends it in some sense).

  59. Hey, I have a good idea. Let’s adopt a patent registration system and also strip defendants from any ability of proving that the claimed invention was old or obvious. Let’s instead put applicants on their good behavior, and provide a meaningful criminal penalty, let’s say, a fine of $100, to deter the less than honest.

    Sounds extremely efficient to me.

    Well thought out!

  60. TJ – Congress (and other legislative bodies) use criminal penalties to deter undesirable behavior all the time. While there may be solid academic arguments as to why criminal enforcement mechanisms are undesirable and less effective than civil enforcement mechanisms for patents specifically (a position with which I obviously agree), it’s perfectly consistent with general legislative practice to rely on criminal penalties for enforcement. In other words, if we think criminal penalties aren’t viable deterrence mechanisms in the patent applicant context, we need to do a better job of persuading Congress that that’s the case, rather than cast them as hopelessly naive.

  61. a higher view of these types of enforcement mechanisms than I do, especially given its treatment of inequitable conduct in the America Invents Act.

    Does that explain why “with deceiftul intent” was purged in the AIA?

    I have never seen a substantive answer to that question.

  62. Jason, if Congress has a “higher view of these types of enforcement mechanisms,” then it is charmingly misguided and doesn’t know what it is doing. I think it fair to say that nobody expects either the PTO or the DOJ to actually enforce best mode. I still don’t see how you get out of my simplistic dichotomy.

    To take your speeding analogy, it is explaining to the teenager that speeding might result in a criminal penalty, but that nobody has been prosecuted for more than twenty years.

  63. Commissioner Stoll said in the Foley & Lardner webinar on the AIA that applications will still be examined for best mode because it is a statutory requirement, and Hal Wegner opined that they must have too much time on their hands if there is no penalty for violation. Isn’t it wiser to include the best mode than to risk losing arcane and academic arguments on why it wasn’t included?

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