Guest Post: Because Inquiring Minds Want to Know – Best Mode – Why is it One-Sided?

(Today PatentlyO is starting a series of periodic guest posts by Professor Christal Sheppard on the underlying rationales for some of the sections of the America Invents Act.  Prior to joining the University of Nebraska Lincoln College of Law this year, Dr. Sheppard was Chief Counsel on Patents and Trademarks and Courts and Competition policy for the United States House of Representatives Commmittee on the Judiciary. – JAR)

By A. Christal Shepard

Since inquiring minds want to know, I will attempt to give, in a series of posts, insights into the underlying rationales for a few sections of the America Invents Act that are causing particular confusion among my friends and new colleagues who were fortunate to not have been as intimately involved in the machinations of the America Invents Act as I have been over the last three Congresses.  

***

I start this conversation with a blanket statement – these are my recollections of the rationales and do not represent the views of any particular member of Congress.  More importantly, do not shoot the messenger.  This blog is only intended to provide contemporaneous context, not a comprehensive analysis, before the march of time distorts memories.  I will not attempt to defend; I will merely explain.

There has been a great deal of consternation and confusion about the changes to the Best Mode requirement, Section 15 of the America Invents Act.  This section is plain on its face, and yes, it is, and was intended to be, bifurcated. The Best Mode requirement remains a requirement, unchanged, for obtaining a patent under 35 U.S.C. § 112 Paragraph 1; however, under the new law, Best Mode can no longer be used as a defense in any action involving the validity or infringement of a patent.  More specifically, a failure of an inventor to disclose their Best Mode is no longer a basis for invalidating, canceling or making a claim unenforceable even if it is later determined that the inventor unquestionably knew of a Best Mode and intentionally did not disclose it to the United States Patent and Trademark Office (USPTO) during examination.  

The bifurcated reform is a compromise that addresses the legitimate litigation concerns with the subjective nature of Best Mode without undermining the requirement for full disclosure that is the quid pro quo for the grant of a monopoly.  If Best Mode was removed completely, Congress could be seen as removing yet another obstacle to trade secret protections overlapping with monopoly rights.  

The impetus for removal of Best Mode from Section 112 of Title 35 of the U.S.C. came from several recommendations to Congress to limit the subjective portions of patent litigations.  I point to one such recommendation that was highly influential, the National Academies’ A Patent System for the 21st Century

Among the factors that increase the cost and decrease the predictability of patent infringement litigation are issues unique to U.S. patent jurisprudence that depend on the assessment of a partys state of mind at the time of the alleged infringement or the time of patent application… Because the [Best Mode] defense depends on historical facts and because the inventors state of mind usually can be established only by circumstantial evidence, litigation over [Best Mode] especially pretrial discovery can be extensive and time-consuming.[1]

Although the National Academies’ report also states that eliminating Best Mode completely could be accomplished without “substantially affecting the underlying principles that these aspects of the enforcement system were meant to promote.”[2] Their, and others’, primary objection to Best Mode was that it was an unnecessary burden for litigation, similar to inequitable conduct, often pled but rarely found.

While Best Mode may be unnecessarily burdensome for litigation, Best Mode is not a superfluous requirement.  It is intended to implement the constitutional directive of "promoting the progress of science and the useful arts"[3] by preventing an inventor from obtaining patent protection, “the embarrassment of a monopoly,”[4] while simultaneously concealing a trade secret for the preferred embodiments.  “The purpose of this requirement is to restrain inventors from applying for a patent while at the same time concealing from the public preferred embodiments which the inventor has, in fact, conceived.”[5]  There is nothing else in the patentability requirements that mandates an inventor’s disclosure of their Best Mode. 

The fault with Best Mode in litigation is not a fault of principle; it is a fault of execution – the difficulty of understanding the contents of an inventor’s mind.

If one believes in the quid pro quo of full disclosure to the public in exchange for a limited monopoly, then the disclosure of an inventor’s Best Mode is essential.  If monopoly is the carrot in exchange for divulging what otherwise would remain hidden as trade secrets then trade secrets SHOULD be divulged in order to patent.  Changing the Best Mode requirement for obtaining a patent would be a significant deviation from U.S. policy and practice that was unnecessary to correct the perceived problem. 

The law should and still does require disclosure of Best Mode, but has eliminated Best Mode from litigation.  The reform addresses the concerns without undermining the requirement for disclosure. 

Many scholars have questioned the fact that, under the new law, the day after a patent issues, the inventor could state that, yes there was a Best Mode known at the time of application that was not disclosed and yet the intentional nondisclosure would have no effect on the claims.  The claims could not be invalidated, canceled or made unenforceable.  

There has been a lot of criticism that Congress did not contemplate this result.  Nothing could be further from the truth. This result was absolutely contemplated by the decision makers.

Essentially the question was, how does one stop inventors from lying to the patent office, that the inventor has no Best Mode, when the inventor in fact has a preferred embodiment?  The more accurate question to ask is, when there are no obvious ramifications, why would an inventor divulge a Best Mode when they can keep it as a trade secret?  

Congress did take this into account but did not address it in the legislation for a variety of reasons. I present a few of the considerations that were discussed.

  1. Give the USPTO authority to undertake  investigations when it is presented clear evidence from a court or third party that a Best Mode was intentionally not disclosed.  Here, the counterargument is that the USPTO is even less well situated than the courts for such a subjective determination.  Furthermore, it is not practical to move this determination from the courts to the USPTO. 
  2. Present evidence of intentional concealment of Best Mode to the Office of Enrollment and Discipline (OED) at the USPTO with the deterrent being the possible loss of the ability to prosecute patents, removal from the patent bar.  This is arguably already possible under 35 U.S.C. § 32, Suspension or exclusion from practice.  The obvious flaw is the same as in the first example; the USPTO is not well situated for subjective inquiries.  Additionally, it may result in punishing the patent practitioner for situations where the inventor intentionally concealed but the patent practitioner was unaware.
  3. Institute a mechanism, identical to that which ultimately ended up in Section 12 of the America Invents Act – the new Section 257(e), where evidence of material fraud on the USPTO shall be referred to the Attorney General for possible prosecution under 18 U.S.C. § 1001, a criminal statute penalizing anyone who knowingly and willfully “makes or uses any false writing or document knowing the same to contain any materially false, fictitious, or fraudulent statement or entry” on any matter within the jurisdiction of the executive, legislative, or judicial branch of the Government of the United States. Again, arguably this deterrent, which is up to a five year prison term, is already possible under 18 U.S.C. § 1001 without any change in the law.

Note that all of these resolutions are arguably already possible under existing law.

One suggestion, not put forth, for the answer to the riddle of “when there are no obvious ramifications, why would an inventor divulge a Best Mode when they can keep it as a trade secret?” is make the ramifications more obvious. The USPTO could add a check box to application forms, stating “I (we), the inventor(s) have no preferred Best Mode and are aware that failure to disclose a Best Mode can result in up to a five year jail term.” But that is a matter for the USPTO and not Congress.

Would a “check box” solve the problem?  No.  But it is an affirmative act, as opposed to an intentional omission.  This affirmative act may be useful in the exercise of 35 U.S.C. § 32 and 18 U.S.C. § 1001 should there be abuses and allows Congress to preserve the U.S.'s emphasis on full disclosure in exchange for the government grant of monopoly.

In the end, I do not disagree with the criticisms of the effect of the new law on Best Mode.  But I do vehemently disagree that the consequences were neither considered nor understood by Congress.

[1] Stephen A. Merrill et al., A Patent System for the 21st Century, no. 7, 121 (2004).

[2] See id. at 7.

[3] U.S. Const. art. I, § 8, cl. 8.

[4] Thomas Jefferson to Isaac McPherson, 13 Aug. 1813.

[5] Young Dental Mfg. Co., Inc. v. Q3 Special Products, Inc., 112 F.3d 1137, 1144 (Fed. Cir. 1997).

 A. Christal Sheppard is an Assistant Professor of Law at the University of Nebraska Lincoln College of Law and former Chief Counsel on Patents and Trademarks and Courts and Competition policy for the United States House of Representatives Committee on the Judiciary.  Look for her next PatentlyO posting on Supplemental Examination.

120 thoughts on “Guest Post: Because Inquiring Minds Want to Know – Best Mode – Why is it One-Sided?

  1. In today’s email it apears that Hal has restated his position slightly. He makes the following points:

    For applications with filing date after March 16, 2013, but with
    a) Pre-March 16, 2013 Priority Claim – All Claims Entitled to Priority: If all claims are substantively entitled to priority, “Old Law” governs.

    b) At Least One Claim is NOT entitled to priority: “New Law” governs.

    This would appear to be a retrenchment from the CIP gets old law position to a CON gets old law position.

    This should also put the “ghosts in the AIA machine” to rest.

  2. Why would the law lean one way for term limit definitions (the patentee has the most generous option) and the other way for the AIA?

    I may not be remembering this correctly, but wasn’t one of the drivers for the generous patentee option the fear of invoking a Constitutional taking?

    It does seem that the AIA has no fear of that with several retroactive sections materially affecting a range of rights, priveleges and grants.

    It also does seem that Hal Wegner is off on this.

    I think that I will have many, many questions.

  3. I am not sure if it was claim by claim PER SE, but rather the application of law (new or old) fell to whether or not any priority could be claimed to an application filed before the critical date.

    That is the reason why the CIP mechanism allows a floodgate – the application that can establish any amount of tie in to an application filed before the critical date realizes the law that applies to the earliest priority – even if that priority is later removed, as in making a preliminary amendment removing the very items that establish the link. This would be even more difficult to manage than a claim by claim situation (which we technically have even now with CIPs). This would be phantom CIPs.

    Doesn’t sound right to me – but there are many things more strange in the AIA.

  4. Personally, with all that constitutional debate about whether one could grant a patent to a second inventor, no one seemed to realize that the Act was structured to allow patents to non inventors, and that what we really had on the table was “first to file” and not first-inventor-to-file. Had Congress realized this, they may not have even passed the bill at all.

    I don’t know how the courts are going to deal with this from a constitutional point of view. The words of the Act still say that the patent shall be granted to an inventor. But no one, save a rival inventor claiming the same invention, can question that a named inventor is in fact a real inventor. What does this mean? That handwaving, shell games and fiction trump facts?

    The drafters of the Act knew what they were doing, and they were very clever in their shell game. They got what they wanted — first-to-file.

  5. Wait a second, maybe I do understand. The nondisclosure of best mode could not be a but-for because the actual disclosure would not cause the PTO to reject the application. Thus, what I have labeled as the second prong of the but-for test cannot be met. Correct?

    I am not sure what you are referring to as to which forms may be applicable??

  6. No takers on the topic of the poison pill? No one thinks that the politicians aren’t smart enough to keep the “Reform” legislation money machine going (or at least lay the seeds for the next round)?

  7. Student,

    Am I missing something here, Teacher?

    Are you?

    Let’s consider your own words: “fails to disclose prior art to the PTO, that prior art is but-for material

    Now what aspect of but for material can you draw to the other points of discussion?

    (Careful, this may involve different forms of reasoning – Bonus points – which forms may be applicable and why?)

  8. So the elements of the but-for test would seem to be:
    1) a nondisclosure of information to the PTO
    2) PTO would not have issued claim had it been aware of the nondisclosed information.

    Additionally, the court will make this determination under a preponderance standard and give claims their BRI.

  9. So the elements of the but-for test would seem to be:
    1) a nondisclosure of information to the PTO
    2) PTO would not have issued claim had it been aware of the nondisclosed information.

    Additionally, the court will make this determination under a preponderance standard and give claims their BRI.

  10. “When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” – therasense

    So but for the nondisclosure of the best mode, the PTO would not have allowed the patent to issue because best mode is a requirement of 112…??? Am I missing something here, Teacher?

  11. The only question is whether the Act applies to “applications filed after date X,” “inventions disclosed after date X”, or “inventions first disclosed in applications filed after date X.”

  12. Teacher, thank you for your help. Are you referring to the supplemental examination procedures in section 257(c)? I guess I see that the patentee could take advantage of the supplemental examination procedure to correct the failure to disclose. What if the patentee doesn’t take advantage of the supplemental examination procedure to correct the failure to disclose the best mode? In that situation, wouldn’t the but-for test apply and render the patent invalid for I.C.?

  13. Pure Clean, "the court required us to list."

    Well bravo for that.  

    Regarding the "best mode" disclosure in the first instance, it does look like you guys did a good job.  

    Bravo for that as well.

    But I hope you do see that to outsiders it just might appear that some of those trade secrets might be "best modes."  Might be.  

    Imagine suing a competitor on a patent on a new technology and also suing that same competitor for trade secret misappropriation by hiring inventors or managers in the same technology.  I for one see some tension between
    the two legal theories given the best mode requirement.

     

  14. Hi Ned. Not sure what you do (business, firm, etc.), but I can tell you for certain that in all the corps I’ve worked, for every patent filing there are generally 20 invention disclosures that do not get filed and are held as TS. And in each case when filing an application, we’ve considered BM and whether we need to “de-class” certain things then held as TS, and we did so when needed.

    I’ve only been involved in one “Inevitable Disclosure” case. There, the court required us to list (under seal) with some specificity the secrets the former employee had stuck in his brain. They included in majority directional plans for the R&D program he had headed (which could have nothing to do with any of our patents) and a number of other manufacturing “tweaks” he or his team had worked out over the years that we felt lent competitive advantage. None of those “tweaks” implicated BM on any of our patents, either.

    I just think you’re barking up the wrong tree if you can’t see the forest of trade secrets surrounding (but not impinging upon) the BM bush….

  15. MM, I agree with you. However, another poster said that Wegner had contended that the issue was claim by claim.

    Now, it was that, claim by claim applicability, was what I considered impossible to administer.

  16. 6, thanks for the linked article.  It does have this passage, which I think summarizes my point:

    "the second prong, which is an objective question,
    asking whether the disclosure is sufficient to enable
    one of ordinary skill in the art to practice the best mode."

    If the spec fully enables one of ordinary skill to make and use, including the details of a particular implementation, the details of a specific limitation are not a "best mode."  The best mode really is subject matter unknown and not readily available to the public given the teach of the specification, and is subject matter that could be kept secret (at least for a while.)

  17. “no exact road map is ever required.”

    No, it isn’t, but the best mode is. They are distinct things tard.

    And nobody said you had to ID the best mode, you just had to give it. Although I would support a law stating that you do need to ID it. It would just make things simpler for everyone all around. Clarifies the applicant’s responsibility, gets something easily reviewable on the record and just simplifies the entire thing.

  18. Where did you make up this presumption Ned?

    Heck, even Judge Rich understands this better than you;

    As Judge Rich noted, “the sole purpose of [the best
    mode requirement] is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived.”

    You should read this article from someone who knows:

    link to 64.237.99.107

  19. Still, the problem with Inevitable Disclosure is the non specificity of what the trade secrets are. If a specific trade secret were required to be identified, and if THAT trade secret was a BEST MODE, non only would the patents be invalid, but the trade secret owner should be tossed under UNCLEAN HANDS.

  20. Unfortunately, patent prosecutors have completely ignored this.

    Do you blame them? They only write for evenmore entrenched audiances.

  21. Just so I’m clear: According to Ms. Shepard, our judicial system is incapable of discerning the subjective “mind of the inventor.” But this same judicial system is charged with discerning the minds of murders and con artists? Would Ms. Shepard propose changing the penal code and civil code to remove the subjective elements of homicide and fraud because courts are ill-equipped to divine the contents of the defendants’ minds?

    Weak sauce.

  22. Wegner believes that the new law will not apply to “claims” (not applications, mind you) having an effective filing date prior to the effective date of the act even when the application itself is otherwise covered by the Act

    If the Act states that it applies to “applications filed after such and such date,” I think it certainly applies to the claims presented in such applications, regardless of the effective date applied to those claims for determining the prior art, etc.

    I don’t see why this would be “impossible” to administer, or even difficult. The issue comes up all the time (or used to) with respect to applications filed after the enactment of GATT but claiming priority to applications filed before GATT.

  23. I think I understand the question, but see plenty of areas where there is no conflict between maintenance of trade secrets and making the BM requirement. In industry, I’d guess the majority of the trade secrets relating to a particular device are manufacturing improvements etc. that are put into place during the (manufacturing) lifetime of the device… …and the patent application claiming that device was likely filed well before manufacturing was even fully scaled up.

  24. I wouldn’t count on it. The legal industry over here has been bombarded with a legal writing in plain English drive over the last few years (or maybe much longer). Unfortunately, patent prosecutors have completely ignored this.

  25. Ignoring intent, materiality is proven under a but-for standard. Couldn’t a litigant asserting invalidity argue that but-for the nondisclosure of the best mode, the patent would not have issued? If best mode remains a patentability requirement, then it seems that the but-for materiality test is met.

  26. It might be difficult to find a transcriber / court reporter who could transcribe the broken English of many examiners.

  27. One wonders at times whether there is any tension between the doctrine of inevitable disclosure and the patent system? There are companies who patent heavily in a technology area, and yet will sue inventors and their new employers for “inevitable” trade secret misappropriation when those inventors change companies. However, how is this possible if the law requires the disclosure of the best mode of making and using the invention, including trade secrets, as a condition of obtaining a patent?

  28. In another thread, someone made the observation that Wegner believes that the new law will not apply to “claims” (not applications, mind you) having an effective filing date prior to the effective date of the act even when the application itself is otherwise covered by the Act. In other words, the applicability of the Act depends on the earliest effective filing date to which a claim is entitled.

    I know this is impossible to administer if true, but do you share Wegner’s view?

  29. I hear you, Ned. What else would you expect from the Abomination Inane Act? I’ve printed the entire AIA out (~150 pages) so I can through it “slowly” (and repeatedly) to understand what this monstrosity means in all it’s “ugly flavors.” The AIA is at least as bad as Hatch-Waxman in terms of being draftedly poorly.

  30. MaxDrei said…
    Max said. Cowboy, I do not understand your: “the attempt to benefit from the parent’s filing date is defeated by the failure to disclose best mode in the parent”

    Max, I regret to have to say that I was in error, as EG pointed out. I guess it just shows that not only is AIA bad as to stuff you know about, it is also a trap for the unwary.

  31. Then again, a point of clarification, MM. Are you saying that you can’t claim benefit of the parent application if: (1) you’re claim includes the undisclosed “best mode”?; or (2) you’re claim isn’t “enabled” or supported without the undisclosed “best mode”? I agree with you if it’s situation (2) but disagree if its situation (1). Section 15(b) of the AIA makes clear that in situation (2), omission of the “best mode” is irrelevant to claiming priority benefit under 35 USC 120 or 121.

  32. Max–

    Of course, this is the “sufficient specificity” test considered in, for instance, the Petering analysis.

    For me, the “sufficiency of the specificity” is tied to the statements of utility in both the genus and species claims.

    The statement of utility is NOT a superfluous requirement for the grant of a patent–it is instead essential and critical. In making and using the 50.4/49.6 alloy of the genus claim, one is not “practicing an already-patented invention”; one is “using” the alloy for something entirely different than was contemplated in the utility of the genus claim patent.

    Note that, based upon the attempt to patent the species for its unique properties, the 50.4/49.6 alloy should not be considered the “best mode” of practicing the genus invention, the genus as a whole not containing those unique properties.

  33. “You have a very strange view of anticipation, if you think nothing can be patented merely because it infringes the claim of a previous patent, when it was explicitly not disclosed in that previous patent.”

    IANAE, your suggestion requires that something infringe a claim in which it is not disclosed, which is of course impossible. Please check your logic.

    “Your theory would invalidate any patent on any improvement of anything.”

    No, it wouldn’t. An improvement-type claim contains all limitations of the original claim, plus additional limitations. “Best mode” does NOT add limitations to a claim.

  34. What further complicates the topic is that the inventor is only required to present the invention such that further trial and error to actually perform the invention is not excessive – no exact road map is ever required.

    If “enough” is given, then “enough” is given. In fact, if multiple modes are given, the best of the multiple modes need not even be identified to satisfy “best mode.”

  35. Just to be crystal clear, you still need to have 112 support in your priority document(s) for any claim seeking the benefit of those documents. It doesn’t matter what the subject matter of the claim is.

    There is no exception to the requirement for 112 support if the newly claimed subject matter in the daughter is the (undisclosed) “best mode” of the invention in the priority document. You will still lose the benefit of your priority claim if the other requirements of 112 are not met.

  36. Now that, I believe, must have constitutional ramifications.

    Is this the poison pill that skuttles the ship, allowing Congress once again to be, um, graced by all those special interest groups…?

  37. A. Christal Shepard

    In future post, I would hope you can give us some insight into why you removed 102(f) from the statute. While the named inventor still must file an oath declaring that he believes himself to be an original inventor, whether he is an original inventor is no longer a condition for patentability, and because of that, no longer a condition for validity. (Under §282, there are limited grounds for invalidity. They include the conditions for patentability (102, 103), §112, and §251.) This of course means, just like best mode, whether the named inventor actually invented anything has effectively been remove the statute.

  38. The computer is a “best mode” of previously known silicon.

    Now that would be an interesting tangent to follow…

  39. You see, 6, this is what gives this mode such a bad name the patent bar. Most of us would consider the best mode to be something that is not routine and that could be kept as a trade secret. For example, see the whole discussion on this issue by Inviting Body Punches. There is an assumption that the best mode includes some subject matter that is not routine and that would prevent the public from using the invention in competition with the inventor after the patent has expired.

  40. Nobody can subsequently patent the best mode of practicing an already-patented invention, as it is anticipated.

    You have a very strange view of anticipation, if you think nothing can be patented merely because it infringes the claim of a previous patent, when it was explicitly not disclosed in that previous patent.

    Your theory would invalidate any patent on any improvement of anything. BRCA1 is a “best mode” of previously known nucleotides. The computer is a “best mode” of previously known silicon.

  41. Well that one caught me by surprise, I must say. Can that be right? What if A patents a new binary alloy, say nickel-titanium, reciting ranges of composition of the two constituents, but not reporting that on the button 50.4/49.6 delivers a shape memory effect. Later, B claims NITINOL shape memory alloy, on that button. Does the earlier A filing, covering the broad range within which NITINOL lies, anticipate B’s NITINOL invention?

  42. But of course in the final analysis I agree with you, we should let go of the “best mode” requirement.

  43. Max–

    “Best mode” is the best way known of practicing the disclosed invention.

    Nobody can subsequently patent the best mode of practicing an already-patented invention, as it is anticipated.

  44. AC,

    Actually, Section 15(b) of the AIA addresses failure to disclose the “best mode” in the parent (by amending 35 USC 120 and 119(e) and basically says it’s not a basis for a challenge to priority). Like others have said, time to read the AIA at least 10 times.

  45. Under the new law, the daughter patent’s validity is challenged…. on the ground that the daughter is invalid over prior art and the attempt to benefit from the parent’s filing date is defeated by the failure to disclose best mode in the parent.

    Just to be clear, in the case where you are trying to newly claim a previously withheld “best mode” in a daughter case, this same analysis applies under the “old” law.

  46. IANAE–

    With respect, you seem to be all over the place.

    With regard to your:

    p1 – the fact that “best mode” is a “requirement” is arbitrary–the whole point of this discussion is to examine the basis of the decision to make it a requirement–the requirement is not inherent

    p2 – your logic is merely conclusory (see above); you cannot simultaneously disclose something AND keep it a secret

    p3 – it is not; the patent is the “what”, the mode is the “how”; while the practice of an invention may include all the elements of the claim, it also includes more, such as design and mode choices

    p4 – no it would not add new matter, as any mode of practising the invention is supported by the claims, which remain unchanged (although this is admittedly a hazy area, the subject-matter of “new matter” properly relates to the scope of the claims, which is unaffected by disclosures of “mode”)

    p5 – no, he couldn’t seek patent protection for subject-matter that was strictly a mode of practicing a patented invention, and that is the whole point.

  47. I agree with this, MD.

    As I wrote above:

    A better law would be one which invalidated later-filed patents on inventions which the inventor possessed at the time of his first-filed patent (and which could have been disclosed in his first-filed patent), and which the inventor argues were non-obvious improvements over the first filed patent.

  48. The benefit of “my plan” is that it would encourage disclosure of the “best mode” but it would prevent patents from being invalidated based on the failure to disclose trivial (obvious, unpatentable) details about an embodiment of the invention.

    This approach punishes the abusers and minimizes traps for the unwary.

  49. Whether I put my best mode in my app is my decision. If I want exclusive rights over a spread of technology I have to put enough in my app to enable over that whole spread. If I keep my Best Mode to myself, the risk I run is that somebody else patents it, and I get nothing (because my app, without the best mode, turns out to have nothing patentable in it).

    As you say, if I find a better Best Mode the day after I file, I can keep that to myself. Where’s the harm in also keeping to myself the Best Mode I found the day before I filed my app.

    Let go of Best Mode. Nothing bad will happen.

  50. Max here. Cowboy, I do not understand your:

    “the attempt to benefit from the parent’s filing date is defeated by the failure to disclose best mode in the parent”

    When I understand that, I can then comment on your doom scenario for those coming in to the USPTO on the back of a non-US priority date.

  51. (see the comment by another poster, Boundy I believe, to the effect that the PTO doesn’t examine for “best mode” unless a third party sends them information. Why not? Because they CANNOT.)

    That’s not a matter of law, it’s a matter of evidence. The PTO can’t meaningfully examine inventorship either, but identifying the correct inventors is still a requirement. Same for whether the invention actually works, which the PTO is generally powerless to determine unless it explicitly violates the laws of physics.

    What is disclosed is examined, and monopoly is granted thereupon–monopoly is NOT in fact “the carrot in exchange for divulging what otherwise would remain hidden as trade secrets”, very simply because the scope of any granted monopoly is limited to the scope of the disclosure.

    The carrot is in exchange for giving the invention to the public. If the patentee retains for himself the best mode of practicing the invention, he has not fully paid for his carrot. If he wanted to keep his invention secret, he should have kept it secret. If he decides to engage the patent system, he should be prepared to tell the public how best to use his invention.

    If the subject-matter of “trade secrets” is not disclosed, then it is NOT included in the monopoly.

    Of course it is. The best mode of practicing the claimed invention is necessarily within the scope of the claims. It may not be entitled to a picture claim if it’s not specifically recited in the spec, but it is most definitely part of the monopoly and it would most definitely infringe.

    Consider that there is no ongoing requirement to maintain or update the disclosure of “best mode”. If a patentee discovers, subsequent to the grant of a patent, a “better mode” that is superior to the “best mode” disclosed in the patent, they are under no duty to make any disclosure of the same in order to maintain their monopoly patent rights.

    Consider that the inventor is only required to disclose what he has invented, and for the purposes that particular application he must stop inventing upon filing. The reason he can’t update the best mode is because it would add new matter.

    Consider: what if a practicing third-party develops a “better mode” than the disclosed “best mode”? That third party is, of course, free to maintain and protect that “better mode” as a trade secret–indeed, that is the ONLY mechanism of protection afforded the subject-matter of said “better mode”.

    There’s one more mechanism you seem to be forgetting. That third party could seek patent protection for his improvement.

  52. I, too, thought that the elimination of patent validity challenges on the ground of concealed best mode would mean more best mode concealments, until I was reminded of another aspect.

    In order to claim priority to an earlier application, that application must meet the requirements of section 112 second paragraph (or whatever the new language is). Thus, to actually get a priority claim, you have to have disclosed best mode in the priority application.

    Under the new law, the daughter patent’s validity is challenged, not on the ground of concealment of best mode, but rather on the ground that the daughter is invalid over prior art and the attempt to benefit from the parent’s filing date is defeated by the failure to disclose best mode in the parent.

    Since the drafter of any new application must realize that the application is likely to spawn children, the drafter has to include best mode.

    And maybe, with the repeal of the Hilmer rule putting US and foreign priority rights on equal footing, failure to disclose the best mode in the foreign priority application will doom the US application. Could that be, Max?

  53. Christal–

    “If one believes in the quid pro quo of full disclosure to the public in exchange for a limited monopoly, then the disclosure of an inventor’s Best Mode is essential. If monopoly is the carrot in exchange for divulging what otherwise would remain hidden as trade secrets then trade secrets SHOULD be divulged in order to patent.”

    I do not believe the premise required in the first sentence. Patent monopolies are granted not on “FULL disclosure” (whatever that means), but on “ACTUAL disclosure”, which is the only thing that can be objectively analyzed (see the comment by another poster, Boundy I believe, to the effect that the PTO doesn’t examine for “best mode” unless a third party sends them information. Why not? Because they CANNOT.)

    What is disclosed is examined, and monopoly is granted thereupon–monopoly is NOT in fact “the carrot in exchange for divulging what otherwise would remain hidden as trade secrets”, very simply because the scope of any granted monopoly is limited to the scope of the disclosure. If the subject-matter of “trade secrets” is not disclosed, then it is NOT included in the monopoly. If it IS disclosed, then it cannot be considered as “trade secret”.

    Consider that there is no ongoing requirement to maintain or update the disclosure of “best mode”. If a patentee discovers, subsequent to the grant of a patent, a “better mode” that is superior to the “best mode” disclosed in the patent, they are under no duty to make any disclosure of the same in order to maintain their monopoly patent rights.

    Why not? Because “best mode” IS the province of “trade secret” protection, whether considered during the pendency of an application, or post-grant, and is therefore NOT within the proper purview of patent monopoly. A third party that practices the invention disclosed in a patent is free to employ ANY method of “making and using” the invention, including the “best mode” known to the patentee, whether disclosed or not.

    Consider: what if a practicing third-party develops a “better mode” than the disclosed “best mode”? That third party is, of course, free to maintain and protect that “better mode” as a trade secret–indeed, that is the ONLY mechanism of protection afforded the subject-matter of said “better mode”.

    There is no cogent argument that I can see, for denying similar protections to a patentee, simply because the patentee has chosen to make public disclosure of different subject-matter in exchange for different protection of that different subject-matter.

    So if it was desired to eliminate “best mode” from litigation because it is expensive and unwieldy, fine–but to maintain “best mode” during prosecution for the above-stated reason is illogical, as it rests upon an entirely false premise.

  54. How much of the cost burden of patenting in Europe, that falls on those who have their patent applications drafted in America, can be laid at the door of the “Best Mode” requirement? Suppose it is Best Mode that has made US-drafted specs 40% longer than they would otherwise need to be. How much translation cost does that save, when you validate a patent in all 40 countries of the EPC?

    Up till now, many US-drafted specs strike Europeans as needlessly lengthy, repetitive, otiose and tedious to read. The drafters of Japan do what is required in the USA. Can we then look forward to a world-wide improvement in readability, as a result of the elimination of the Best Mode attack on validity?

    Mind you, there still remains the No 1 drafting imperative: never say what the invention is, or what technical features deliver what technical effects. For the foreseeable future, that will continue to give patent specifications a bad name.

  55. Christal,

    A very nice discussion by you of this very odd provision in the AIA (which has several “odd” provisions). To say that there is the requirement to disclose the “best mode” but provide no apparent enforcement mechanism (e.g., a defense in litigation) is bizarre. But then again, the AIA (Abomination Inane Act) is bizarre in many respects.

  56. I”m not sure why my post re this didn’t post yet, but here goes again.

    Ned, you’re simply proving my point about attorneytards, they “have a difference of opinion” about what the best mode req is, or “should be”, and then totally ignore it as being (all but) completely meaningless. As you’ve just demonstrated, this persists even after someone in a position of authority informs them that they fed up in a real life case.

    For at least this reason, the best mode req needs vastly larger teeth and needs to be easier to enforce.

    “Under the facts at bar, the particular cork OD for a particular bottle ID for a particular brew for a particular temperature was well within the skill in the art was not and could not be kept secret.”

    That much at least is true, although I’m not sure as to whether or not you want to introduce into the facts at bar a subjective belief by the inventor at the time of filing that the claimed invention was totally great for his particular setup in his brewery. If you do wish to introduce that into the facts at bar then you need to give up the rest of the best mode, i.e. what the inventor subjectively believes to be the best mode of practicing his invention, i.e. the specifics of his setup.

  57. In a situation where the prosecutor intentionally failed to disclose the best mode, why couldn’t a court simply invalidate the patent for inequitable conduct?

  58. I would be all for recording and transcibing interviews. Can we do the same for any time an applicatgion is discussed on the merits, like in quality meetings, pre-appeal breif meetings and the such?

  59. It would suddenly becomes a lot less apocryphal (note the spelling) if we could simply record the interviews. And, simultaneously it would become a lot more egg on the bar’s face.

  60. I agree.

    New 282, in material part:

      “(3) Invalidity of the patent or any claim in suit for failure to comply with–
      (A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or
      (B) any requirement of section 251.”
  61. You see, this is where you and I do not agree.  The best mode would, IMHO, be something that was not readily available to the public using ordinary skill and that could be kept as a trade secret.  

    Under the facts at bar, the particular cork OD for a particular bottle ID for a particular brew for a particular temperature was well within the skill in the art was not and could not be kept secret.

    From: TypePad

  62. There’s nothing more amusing than apacryphal nonsense from examiners about what attorneys and/or inventors confessed to them during interview.

  63. Negligible

    It will be negligible until it is not (oops too late), but then we can always blame the evil republicans…

  64. “Has he failed to disclose the best mode?”

    Presuming you mean that “the invention” aka “the claim” is to a bottle with a cork in it where the cork is a special cork or a special interference fit between corks and bottles and/or a method for applying such a cork to such a bottle such that a certain fit is created and also presuming he subjectively considers that invention to be good for his brewery setup you described then yes you has a problem. And if there’s evidence I’d be glad to bust him for it if it was my app.

    You say you’re an attorney? And you have trouble with this? It really isn’t that hard Ned. It’s all going to depend on what the claims are directed to, and you weren’t very specific in your “the invention teaches” section.

    The whole point of the best mode req was to get details like that which otherwise are left out when describing what lawlyers arbitrarily deem to be “the invention”.

    The details of your invention. We want them for our public. Give them to us.

    It was funny, I was talking to an attorney when I first got here and we just happened to brush against best mode, and he seemed to really not want to talk about best mode. Seemed nervous. He didn’t even have an app before me we were just talking at some event somewhere. From that and other conversations it turns out a great portion of you guys are so used to drafting without disclosing it because there is so rarely evidence to incriminate that you guys you totally forgot w tf the best mode req was and why it is there. One attorney admitted to me in an interview that they didn’t disclose the best mode. I told him he might want to reconsider that or else put the admission on the record. Other attorneys will on occasion note that they failed to disclose the best mode they meant to disclose by swearing up and down that they should have support for x feature amendment because the applicant’s irl embodiment that they drafted from has x feature. That of course displays their being ignorant of how WD works, but also of their failure to tell us about this best mode that they allegedly had but didn’t tell us about. Outrageous.

    All that together is why I advocate for s much stronger best mode req that is easier to enforce.

    All technophiles that <3 the patent system should be jumping at the chance to implement such. We will get more disclosure in exchange for just making a better law. In most apps it would be nothing more than a paragraph or two, and it would help shore up the apps against allegations that they didn’t disclose the best mode. Indeed, you could probably solve the litigation $ issue that way better than the way they implemented it.

    Not only that but it would be super easy to make such a section. Simply make a new section in the spec specifically for the best mode. Some people already even include this, I’ve seen it in some apps. And I think Japan is kind of strict about this or something analogous to this because their disclosures are usually much more specific about things.

  65. this is one of the features of the bill that tips the balance sharply in favor of preserving trade secrets, instead of the disclosure that is one of the key aims of the patent system. And that, in turn, will harm the entire economy.

    Negligible.

  66. Prof Shepard –

    Thanks for giving us the skinny. I hope you can continue. This contemporaneous documentation will be crucial as we go forward.

    I’ve always found it striking that the drafters of this legislation only pointed to the ex post costs of litigating certain features of the patent system, as if litigation were the only arena where patents matter, the only forum in which costs arise. But of course that’s silly. Ex ante effects and investment flows are far larger. Just for one example, in many years of my career, I did a higher dollar volume of patent-driven corporate M&A deals than the entire federal judiciary awarded in damages for the year. The $12B Motorola deal tops any I did, but not by much. For startups, the amount of investment capital driven through the patent system are several $100 billion/yr — the few tens of millions of “savings” advertised for HR 1249 are chump change compared to the likely effect on investment flows.

    “Litigation only” is an almost reasonable blind spot, given that this legislation was lodged solely in the Judiciary Committees. What was frustrating was the refusal of two staffers in particular to learn — meetings I had to explain the relative numbers, and the almost certain economic effects — and watching a face turn to stone and being shown the door when it became clear I was not there to cheerlead for the staffer’s bill. Fortunately, I did not meet with you — I trust you would have been more open to at least hearing the analysis.

    The dirty truth that the 21st Century Coalition carefully hid from the Committee staffers — the PTO has never had resources to investigate best mode. You hint at that in your bullet 1 — but it seems you were only shown the surface of the facts. The PTO only raises the issue when there is some external statement available to the examiner to indicate that a best mode was known and not disclosed.

    I share your concern that this is one of the features of the bill that tips the balance sharply in favor of preserving trade secrets, instead of the disclosure that is one of the key aims of the patent system. And that, in turn, will harm the entire economy.

    We’ll see what happens.

  67. The best mode was eliminated because in many parts of the world, such as those whose lobbying efforts campaign contributions helped to grease the skids for passage of the AIA, they don’t like the pesky disclosure requirements of the U.S. patent system and think that misleading the public and not disclosing what they have actually invented, while attempting to obtain coverage for it, is “good business.” Thanks to the soft, ninny types that thought bought into the sunshine and lollipops of “patent reform” – the joke is on you, and, unfortunately, the rest of us too.

  68. “to not have been as intimately involved in the machinations of the America Invents Act as I have been over the last three Congresses”

    Not sure I would be bragging about that…

  69. We will look forward with bated breath to a revelation by this same author in the next blog as to why AIA 102, includig the “exceptions,” is so poorly and verbosely expressed that it could be used as a bad example in “English Composition 101″ classes, even though it is by far the most important single section of the entire AIA, affecting by far the greatest number of patent applicants and practitioners?

  70. OK 6, try this:

    The invention is a cork that is inserted into a bottle for containing liquid in the bottle. The specification teaches that the cork OD must be sized slightly larger than the bottle’s ID for an interference fit. The invention teaches adjusting the interference resistance depending upon the application.

    The inventor has a particular size bottle for his brewery and adopts a cork of a particular size for that bottle and requirements to resist pressure from shaken beer at temperatures up to 120 degrees F. He does not disclose any of these particulars in his patent application.

    Has he failed to disclose the best mode?

  71. Idk about that MM, I don’t want to penalize people for effectively doing restrictions for me and taking their time filing on whichever specific inventions they want to on a given day.

    In fact, I would want to encourage that.

  72. Personal note to Louwilda,
    Does this mean six Fax sends and one Express Mailing say they got it, and you’re gonna get it? And after all this time (totaling 16 years) they were on to Mail Stop?
    I sure hope so. Because what I sent is clearly defined in the 11 pages plus 2 in pages of Complaint sent.

  73. Ned why on earth would you conceal on the best mode?

    “The so-called best mode was a particular implementation in a particular environment of a mechanical invention that required adjustment of certain parameters that were well within the skill in the art. ”

    Sooooo… why not tell us about it? Lazy bones?

    “That such things could even be considered best mode is almost beyond comprehension.”

    lolwut? What specifically do you think is the best mode if not the BEST MODE?

    “That it is retained at all in section 112 is a crime”

    I think you mean that your specific failure to set forth the best mode might be considered a crime.

    ” It will create uncertainty among practitioners.”

    Thank go d for small miracles Ned!

    “He is guilty of nothing”

    Except concealing on the best mode.

    Fact is Ned, you guys get so cushy thinking you can just disclose whatever the f you want to and call it an inventionlol there is nothing better than a strong and vigorously enforced best mode req.

    “the obligations of the inventor to society are complete.”

    … once he discloses the best mode.

    “Ridiculous details well within the ordinary skill in the art are design choices and no more.”

    So you wouldn’t mind telling us about them then?

    “Yet they are confused with best mode.”

    Sounds to me more like you’re confused about their not being the best mode in some instances.

    “It is mainly for this reason that requirement to disclose the best mode must be totally eliminated from the statute.”

    Because you personally don’t understand the portion of the statute that requires a best mode? Idk bro, that’s not a very good reason.

  74. A better law would be one which invalidated later-filed patents on inventions which the inventor possessed at the time of his first-filed patent (and which could have been disclosed in his first-filed patent), and which the inventor argues were non-obvious improvements over the first filed patent.

  75. Personal rant

    I must say that I am no big fan of best mode. I lost an interference one time because of this, and I felt the result ridiculous and unjust. The so-called best mode was a particular implementation in a particular environment of a mechanical invention that required adjustment of certain parameters that were well within the skill in the art. That such things could even be considered best mode is almost beyond comprehension.

    I person believe that best mode should of been completely eliminated from the statute. That it is retained at all in section 112 is a crime. It will create uncertainty among practitioners. If anybody is put up on charges for failure disclose the best mode, that person is wrongly accused, wrongly prosecuted and potentially wrongly convicted. He is guilty of nothing.

    The statute requires that specification describe the invention and enable one to make and use it. If the specification does that, the obligations of the inventor to society are complete. Ridiculous details well within the ordinary skill in the art are design choices and no more. Yet they are confused with best mode. It is mainly for this reason that requirement to disclose the best mode must be totally eliminated from the statute.

  76. there may be constitutional implications for effectively removing best mode from the law. I am not so sure

    I am 100% sure there are no such Constitutional implications. The Constitution does not require a patent system at all. It gives Congress the power to create one, but essentially no restrictions on how it is to be done. For cripes sake, if 100+ years is a “limited time”, then surely there is no Constitutional requirement for “best mode” disclosure.

  77. The ghost of Thomas A Edision would almost certainly approve of this change. From what I have read, his carbon microphone patent was not a model of clarity for frankness.

  78. If it is not a condition for validity, best mode is gone. Period.

    The author suggests there may be constitutional implications for effectively removing best mode from the law. I am not so sure, but it is one more factor to consider…

  79. Shep I don’t want to shoot the messenger so to speak but that all seems like horse pucky. Essentially they’re getting rid of the best mode req’s ability to be used in defense in court because it is expensive and a tad subjective?

    If we’re going to just throw our hands up about expensive things that get litigation $ then why not just throw out 103 which also depends on a subjective determination of what a non-existant person would have found subjectively obvious?

    I imagine that 103 costs a lot more litigation $ than 112 best mode does.

  80. Drafting, do I include the Best Mode or do I keep it secret? Both options carry risk. Drafters need to get a fully-informed decision from the inventor/client, which option to plump for.

    The risk of omitting the Best Mode is the one present everywhere in the world, that the Best Mode turns out in the end to be the only thing patentable. Then, if it ain’t in the spec, inventor gets precisely zilch.

    What’s this about “full” disclosure. The bargain is limited term monopoly of a defined area of technology in return for a disclosure that enables the reader to perform the invention throughout the area. Beyond that, there is always “know how”. That’s never in the spec.

    In Europe, the EPC requires the claim to be clear. EPO Examiners raise that objection all the time. Till the claim is judged “clear”, no patent. Can you petition for invalidity, with the ground that the issued claim is not “clear”? No, of course not, silly. If that were permitted, everybody would be at it, 24/7.

    No more Best Mode violations after issue? Where’s the harm in that?

  81. “Get another attorney because I’m not going to risk losing my license to prosecute applications or worse,” or maybe, “No problem, you’re my best client by far and I’m going to be retiring soon so the risks are meaningless to me, regardless of what some silly blog says.”

  82. Thank you for this rare peek behind the curtains of the Wizards of Oz, or what Chancellor Bismark referred to as the sausage-making machinery we may be better off not looking at too closely and just enjoy the end results.

  83. Where do you get the “civil action” limitation? I’m not sure I see it in the act, but I haven’t looked at the fully-amended statute – just the bill as-passed.

  84. I could maybe see using the argument that the inventor concealed the best mode as some kind of equitable reason to reduce or eliminate the remedy. Strictly speaking, the relevant claim would not be “canceled or held invalid or otherwise unenforceable.” Unfortunately, how do you get discovery on best mode if the legislative intent is to minimize inquiry into the inventor’s state of mind?

  85. To me, it’s not clear that the legislation prohibits the use of a best mode challenge during the 9 month post-grant review period. The post-grant review is not a civil action, even though it could result in the invalidation or cancellation of a claim. Any grounds for challenge may be raised during the post-grant review period. This would apparently solve the problem of the litigation costs while preserving a mechanism for enforcing the best mode requirement.

    Am I alone on this, or does anyone else think that it is reasonable to read the statute this way?

  86. “The reform addresses the concerns without undermining the requirement for disclosure.”

    If you really believe this, then you’ve been snookered by the interest groups that have been fighting for years to get rid of the best mode requirement.

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