In Memoriam Best Mode

By Jason Rantanen

When Congress passed the America Invents Act and President Obama signed it into law, courts were stripped of the power to declare patents either invalid or unenforceable for failure to disclose a best mode.  While it is true that amended section 112 of Title 35 still technically "requires" patent applicants to disclose a best mode if they know of one, courts will no longer enforce the requirement. For all practical purposes, the requirement that a patent applicant disclose a best mode is effectively dead.

Yet, perhaps in moving to eliminate the best mode requirement Congress acted too hastily.  In a recent online essay published by the Stanford Law Review, Lee Petherbridge and I draw attention to a benefit the best mode requirement provides (or perhaps "provided" is more accurate) that directly challenges the conventional attitude toward best mode, arguing that best mode works closely with the nonobviousness requirement to establish the level of "inventiveness" that the U.S. patent system has long considered optimal.

You can read the complete essay here: http://www.stanfordlawreview.org/online/in-memoriam-best-mode

 

150 thoughts on “In Memoriam Best Mode

  1. The establishment of who concieved the invention is important to retain even when others made lienable contributions and a sale has occured because it establishes the inventors invention clusters to be used as a proof of other conceptions for dispute issues. It is also important in the invention being recognized as the acomplishment of the actual inventor for consumer recognition in boosting sales of whos chain of title to compensate for the invention. Also imprtant is to have consumers recognize when inventors have been cheated of the invention therough the new forced sign off provisions in aia

  2. Ide beg to differ in reality once filed the patent is stolen through interoffice corruption and espionogers run back there corrupt filings in time to make it look like your not the inventor of anything new at all at least if its valuable enough like all my patents are. Also lack of money to proceed with the applications may allow thefting and stop our britest inventors from getting off the ground wile shutting the system down

  3. Yes I would say that however in this system already the inventor is scewed against in every concievable manor already so the term sale means throw him a bone like 10000 and 1% or hire him till the projects done then layoff. Another thing the rejimes do is tell R+D persons to get a project or there fired then they stalk me and approach to steal IP by intimidations.

  4. Michael, no one is disputing that the inventor, the one who thought up the invention in the first place, has the initial right to a patent.

    Not to make fun of you Ned, but one very plausible reading of your series of posts on the “archaic” nature of naming inventors is very much to dispute that initial right. Several on this thread have pointed this out to you. Losing out on an exchange to Mr. Thomas will not bolster your credibility.

  5. Michael, no one is disputing that the inventor, the one who thought up the invention in the first place, has the initial right to a patent.  

    But would you agree that the inventor has a right to sell his invention?

  6. Ned without the conception of the invention you have nothing to begin with so the invention must remain the inventors property of you stall the system and human advancement falters (Destroying the incentive to create)

  7. Yes ned appears to be heading in the direction of pure rip offs and destruction of the U.S.technilodgical lead definately an ancharist the congress has done a bad enough butchering job of cival rights as it is.Hurry get them voted out of office.

  8. What about the concept of destruction of incentive to create and theft of intellectual property. The inventor must be the primaty benefactor of the invention or the whole system is fraud witch it already is in practice

  9. Are you in the habot of not reading what is posted?

    Plus, only inventors invent and the pundit Ar_I_§_8 laid the critical constitutional foundation for the law.

    Or is it as the pundit Big Corp Makes Individual Country Laws (even US laws) an Anachronism states that you feel even the US Constitution is an anachronism?

    I make myself at least the third person now to make this point.

    Please pay attention.

  10. Uphill, I'm sorry, but I don't believe you have discussed just how inventorship is relevant to patentability.  You did cite a case for the proposition that inventorship is relevant to ownership.  To that proposition I have expressed agreement.

    Just for me and for our dear readers, could you help us just a wee bit and provide a simple explanation of how inventorship remains relevant to patentability?

  11. why inventorship remains relevant to patentability

    I already did so.

    I gave you law.

    Isn’t that enough?

    Plus, only inventors invent and the pundit Ar_I_§_8 laid the critical constitutional foundation for the law.

    Or is it as the pundit Big Corp Makes Individual Country Laws (even US laws) an Anachronism states that you feel even the US Constitution is an anachronism?

    I am not sure where you get off making a proclamation and expecting the world to turn on your view.

  12. Naming them seems irrelevant.

    No. No. No.

    Ned, I have shown you the law on this and explained to you how that law was not changed by the America Invents Act.

    We do you repeat your error?

    You deciding to label everything as “anachronistic” simply does not make it so.

  13. If, the point I am making is that inventorship seems to remain relevant only with respect to ownership.  The applicant can be the owner by assignment.  If the applicant is owner and not the inventors, and let us say he records his assignments, why is it necessary to further name the inventors?  Naming them seems irrelevant.

    CIPs?  If the owner files a CIP from an application with common disclosure which he also owns, where is the problem?  Really?

    I think a lot of our thinking is anachronistic.  We should take a hard look at streamlining our procedures along the lines of reality where the owner of the invention is the real party in interest.

  14. Who’s paying a “lot of money” to record assignments at the USPTO? I can probably beat that price.

    There is exactly one good reason for recording assignments at the PTO. It’s in the last paragraph of 35 U.S.C. s. 261.

  15. OK, I’ll bite.

    What are the two reasons why you would not pay a $35 recordation fee and about a half hour of a lawyer’s time (max) to record title with the USPTO?

  16. Sorry if you are being sarcastic and I am not getting it.

    It is just that I can see at least two reasons why one might positively decide NOT to record title, but not one good reason that would prompt one to pay a lawyer a lot of money to record that title.

  17. Attribution is not necessary in the patent itself.

    I cannot find where anyone indicated otherwise.

    However, several have commented on the laws that govern the practice of obtaining that patent.

    Not sure exactly what point you are trying to make with your reply.

  18. You don’t see any benefits of taking due care and dotting your i’s and crossing your t’s?

    Really?

  19. In our new FTF system, inventorship is a non issue, so why in the world should we name the inventors even as a matter of formality? Who the inventors are is totally irrelevant from a patentability point of view.

    No. No. No.

    Ned, I have shown you the law on this and explained to you how that law was not changed by the America Invents Act.

    We do you repeat your error?

  20. Thanks. I know why it is a mistake for patent owners not to record their title in Europe, but why should they give money to law firms to record their title at the USPTO? I don’t see it yet.

  21. So, a bit like the first sentence of Article 60 of the European Patent Convention then? “The right to a European patent shall belong to the inventor or his successor in title”

  22. Attribution is not necessary in the patent itself.  Ownership must only be proved in court.
     
    In our new FTF system, inventorship is a non issue, so why in the world should we name the inventors even as a matter of formality?  Who the inventors are is totally irrelevant from a patentability point of view.

  23. which is why I limit the “no harm no foul” position here to the rightful owner

    A tautology here is; the end to be proven, assumed is.

    If rightful owner assumed, you have; everything proper including back to and including proper attribution to the actual inventor, assumed you have.

  24. Assignments provided to the USPTO are neither examined, required, nor dispositive.

    See for example, link to uspto.gov

    What does it mean when a document is “recorded ?”

    The office simply puts the information on the public record and does not verify the validity of the information. Recordation is a ministerial function. The office neither makes a determination of the legality of the transaction nor the right of the submitting party to take the action.

  25. Max, in the US, the alleged patent owner has the burden of proof in court to prove ownership, otherwise he has no standing.  In the PTO, the registered owner is presumed to be the owner; otherwise the owners are the inventors as tenants in common.  To shift the presumption that the inventors are the owners, the new owner must have an assignment of some sort in writing.

  26. Ned, you write:

    “…he will have to prove his title by proving up an assignment”

    I’m interested in that statement. Here’s why.

    In Europe, prima facie the owner A displayed on the PTO Register is the rightful owner and does not need to prove it. If some other party X claims to be the true owner, and seeks to displace A from the Register, the burden of proof rests with X.

    As far as I know, in issues of patent ownership in Europe, this allocation of the burden has always been so. The contrary in copyright, where there is no official Register. There the party asserting the right might be put to strict proof of ownership.

    What’s the point of an official Register, if not to establish prima facie proof of title?

  27. If there are no legal consequences for the rightful and legal owner of the invention to name himself as the inventor, then wouldn’t you think that the naming of the inventor is a mere formality?

    As your premise has been shown to be an impossibility (corporations cannot be the named inventor), it is completely unclear what you are going on about.

    Secondly, there are available actions against improper chains of title (back to and including the original inventor), not the least of which is standing, which very much retains its legal power.

  28. Uphill battle,

    If there are no legal consequences for the rightful and legal owner of the invention to name himself as the inventor, then wouldn't you think that the naming of the inventor is a mere formality? 

    We have the same problem with "best mode."  There are no legal consequences for not disclosing the best mode.  For this reason, the so-called obligation to disclose the best mode is a mere formality.
     

  29. but without even naming them

    No. I showed you the law. Why are you not getting this?

    being a mere formality

    In that sense, all law is a mere formality. Why bother with any of it?

  30. I guess that Ned feels that the constitution is archaic (at least when it comes to his agenda). I mean, the founding fathers are not around, so who cares about the true individual inventor? Big Corp is what really matters.

  31. “Why not lie?”

    Is that what I really understand you to be proposing?

    Don’t you have enough issues with your reputation as is?

  32. I believe the question was whether the owner of the invention could apply on his own, not only without even asking the inventors their permission and being denied, but without even naming them.  I think the owner could; the naming being a mere formality that could and possible should be dispensed with.  However, I think we maintain the requirement due to treaty obligations.

    So, what happens if the owner names himself as the inventor?  Eventually, he will have to prove his title by proving up an assignment, but the mere naming of himself as the inventor will not invalidate the patent.  So, in the end, why not?

  33. The simple retort is this: Inventors can assign their rights

    No one said otherwise. How is this even germane?

  34. I assume they can be assigned by operation of law if Congress were to pass a work for hire statute regarding patents.

    “I ASSume.”

    Yeah, thought so.

    Even simpler retort – the question is not about what you can ASSume. The question is about the current state. Further, even ASSuming an assignment by operation of law, such assignment changes none of the law about both who FIRST innurs the patent right and thus whose name goes on that patent as inventor. An assigned right does not carry with it the right to change inventorship. Ownership and inventorship are simply two different things.

    Now stop trying to move those goalposts.

  35. The simple retort is this:

    Inventors can assign their rights. I assume they can be assigned by operation of law if Congress were to pass a work for hire statute regarding patents.

    I am not advocating that the applicant for patent not have obtained their ownership rights from the inventors. I think that, just like in court where the owner of the patent may bring suit, in the original application, the owner of the invention should be able to apply for and obtain the patent.

  36. To Ned Heller, who has trouble with the idea that the AIA got rid of 102(f) etc. and so could somehow have made it possible for corporations to be applicants for patent:

    Ever hear of the supremacy clause? To the extent the AIA may be viewed to do this, why would it not be unconstitutional?

    (“… to inventors…”)

  37. Eliminating the best mode requirement will be a good thing for the incentive to create in non technical inventors. Going back to initial document disclosure program would help to.Allowing the inventor to advance a parent conception with associated subinvention is the way to end up with the patent awarded in the wrong name. Care to check for a genuine new intellectual concept is critical with a specific enough description of the unique features is key. In non indegent inventors time limits should restrict companies that cant genuinley progress the invention from yieing up the concept yearly checks should determine progress or lack of it and at 3 years independant sub inventors should have the right to become required partners or take over the project from uncoperative firms to insure progress

  38. I believed I was right, and I still do, on the merits.

    I don’t recall the details

    literally, laugh out loud funny Ned. Don’t know what your talking about but still feel that you must have been right?

    Misleading? Not at all. The jester suit looks custom made.

  39. So you do admit that your post stating that I did not know the importance of the vacatur was an a bit misleading.

    No, because it was not my post for one, and for two the post was accurate. It’s astounding that you of all people question anyone’s legal knowledge given the quality of your posts, or lack thereof.

  40. Well, in the end, you might be right

    Can we not move the goal posts?

    Might be right? I am right. I answered your post of 5:01 AM. I explained the what and the why and backed it up with legal authority.

    Let’s not now move the goalposts to discuss what “only seems logical” or “who really cares who the inventors are.” Let’s leave out the perjoratives like “anachronistic.” IF Congress had wanted to change who can be named an inventor, they should have done so directly. They did not. End of story.

  41. Well, in the end, you might be right. As I see it, the owner can now apply for the patent, make the oath, or file the assignment of the actual inventor who makes the oath, and operate almost entirely without the cooperation of the actual inventor. It seems only logical to be able to go the next step and entirely ignore the inventor in the patent application process, leaving the issue of who the inventor actually is solely to the province of proving title, a court issue.

    We might have treaty obligations that require us to name the inventors, but they too might be anachronistic as more and more countries go to a work for hire regime where title in the invention vests by operation of law in the employer. Who really cares who the inventors are if the employer makes the application and no one challenges his ownership?

  42. You have conflated things. Neither the rule nor the case law have any such dependency on the section of law you provide.

    In other words, it doesn’t matter that the AIA eliminated 102(f). The portions I mention are still the same thus you still cannot have a non real person as an inventor.

    I get what you want but you are not at liberty to get it if the law did not actually give it to you and as I posted the AIA did not give it to you.

  43. Uphill, but you neglect to consider the effect of the repeal of 102(f).  No longer is the named inventor required to have invented anything.  That is a major change in the law that your older case could not have foreseen.  The assumption that the named inventor actually to have conceived the invention, per current law, is gone.  

    True, the independent law of ownership of a patent has not been affected by the AIA.  Your cited case is on point there.  The patent owner still has the burden to prove that he derived from the inventor, and I presume that means an inventor who conceived the invention.  But that is in court, not in the PTO, and the standing/ownership issue has nothing at all to do with whether the named inventor on the application be the one who conceived the claimed invention.  That is no longer a consideration as was made clear by the repeal of 102(f), and the other changes made to the statute to allow assignees to file the application.

    So why not simply allow the owner to name himself as the named inventor?  I see nothing at all wrong with that per the new AIA.

    However,  I remain open to contrary argument based on the AIA.  We can take our old assumptions about named inventors and politely filed them away in the file labeled "anachronisms."

     

  44. Ned Heller,

    Let me remind you

    Did you not see the rule I posted? Did you not see the case law I posted? Is that not enough legal basis for you? That basis has not changed. If you think it has, you need to pony up and show it.

    PURfect Freeriding,

    equally meaningless

    Don’t blame me because the AIA makes the results effectively meaningless. I am still correct as to the process and that was what the question from Ned Heller was concerned with.

    You may be correct that GMC Corp. may have an effective patent with the so-called phantom inventor, but they will not have a patent with them listed as the inventor. The America Invents Act simply did not change that portion of the law. At least not as yet shown by Ned Heller. The named inventor still must be a real person. That is the law. If either of you think otherwise, show it to me. I have done my part and shown you the existing law.

  45. Good question and observation.  Ownership will still be a matter of who invented, so this will implicate standing in court.

    However, if the corporation owns the invention at the time of the application, what legal basis is there to reject or object to the corp. being the named inventor?

    Sent from iPhone

  46. GMC Corp. or “Mr. John Smith” a distinction as equally meaningless when John Smith won’t sign an oath (because he knows he did not actually invent anything, but Big Corp Multinational can still process the application sans oath given the change in law that the AIA provides.

  47. Uphill,

    Note 37 C.F.R. § 1.46 Assigned inventions and patents:

    In case the whole or a part interest in the invention or in the patent to be issued is assigned, the application must still be made or authorized to be made, and an oath or declaration signed, by the inventor or one of the persons mentioned in §§ 1.42, 1.43, or 1.47.

    Specifically 1.47(b) under the AIA allows Big Corp Multinationals to process applications with NO oath from an actual inventor having to ever be made.

    Thus the invitation to create “phantom” inventors.

    While the formality of a “named” inventor is still present, it is a formality without any teeth. Deceptive Intent? Gone. Oath? Gone.

  48. As to rejection or objection, the distinction is meaningless.

    You will not be getting a patent for an application that names GMC Corp. as the sole inventor.

  49. The “named” inventor is still required to be named.

    37 C.F.R. § 1.41(a)

    A patent is applied for in the name or names of the actual inventor or inventors.

    Also see Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993).

    “At the heart of any ownership analysis lies the question of who first invented the subject matter at issue, because the patent right initially vests in the inventor who may then, barring any restrictions to the contrary, transfer that right to another, and so forth.”

    Are you saying that the America Invents Act changed this understanding of law? If so, please specifically point out where.

  50. "If I recall correctly it was both, and your insistence on your position even after being informed was what alienated one of the few friends of yours on this website, "A New Light.""
     
    So you do admit that your post stating that I did not know the importance of the vacatur was an a bit misleading.

    If I recall correctly, New Light and I crossed swords on the District Court opinion.  That I maintained my position had nothing to do with the Federal Circuit case as legal authority.  I believed I was right, and I still do, on the merits.

    I don't recall the details of the particular issue under discussion.  But if you want to bring that topic up again, we can discuss it once more.

  51. Uphill, you seem to confirm my suspicion that you cannot formulate a "rejection."

    Regarding your objection, what is the legal basis for your statement that a corporation cannot be an "named" inventor, when the law does not even require, post September 16, 2012, that the "named" inventor have made the invention?

  52. If I recall correctly it was both, and your insistence on your position even after being informed was what alienated one of the few friends of yours on this website, “A New Light.”

  53. The poster cannot possibly be an attorney

    LOLZ. Same exact thought that goes through my mind for 95% of Ned’s posts.

    Perfect example right above.

  54. The poster cannot possibly be an attorney

    LOLZ. Same exact thought that goes through my mind for 95% of Ned’s posts.

  55. Adverse to a little education, are we?

    Ned’s style of “education” – be very afraid.

  56. Even post 9/16/12 an application cannot name a non-natural person as sole inventor.

    Your application would be objected to as to form and you would be supplied a notice of missing parts.

    You want to fight that objection? Good luck.

  57. The phobia about homosexuality is all in your own mind, my friend.

    See my posts at May 13, 2012 at 09:01 PM and May 14, 2012 at 03:32 PM.

    You alone are fighting this battle. With yourself. Is that why you are so sensitive?

  58. Stan, on best mode, leaving it in 112 makes no sense at all. However, taking the requirement for best mode out of our laws is all to the good, in my view.

  59. astounded that you would not know the difference

    Coming from the guy who was not aware of the posture or the importance of vacatur in the Tafas case, Ned, your admonishment comes across as both insincere and unbelievable.

  60. Because it was chosen to be covered under 37 C.F.R. § 1.53(b).

    That was a mere choice that does not support what you think it supports.

    You are really losing it. Time to hang up and retire. Go golfing. Go fishing. Go do anything else but post on law.

  61. the legal basis for the 112 rejection is in 282

    That would be not correct.

    The legal basis for the 112 rejection is…

    …112.

    112 still has the legal authority of itself.

    Ned, one of your wackiest (and that’s saying a lot)!

  62. No, Utoo, I read the statutes, the legislative history, the Supreme Court cases interpreting them, from 1790 onwards. You obviously learn your patent law from the foot of certain Federal Circuit judges who seems to think patent law began in 1952, and cases prior to the formation of the Federal Circuit are to largely be ignore.

  63. What a sad little man you are that you have to spew this kind of hateful venom on the internets. Plus, your grammar sucks.

  64. metoo, I am astounded that you would not know the difference between law and procedure.  A rejection is grounded on statute.  A claim can be rejected only if it would be invalid.  

    Check, e.g., Section 132.  There new matter is prohibited.  But the examiner has no authority to reject claims under 132.  Why?  

    Once you figure that out, come back to class.

  65. metoo, but you ignore that the legal basis for the 112 rejection is in 282.  That section is the one making a violation of 112 a condition for patentablilty. Otherwise it is not, as opposed to both 102 and 103, that contain expressed conditions for patentablity.  

    In the future, the examiner has no legal authority for rejecting a claim on best mode grounds.

  66. Jason thanks, but are we not both saying the same thing, namely, that:

    “If the best mode is not disclosed, future applicants will be able to patent that mode”

    Is that risk/threat not enough in the USA to encourage an Applicant to include his Best Mode, in self-defence, without any need for a statutory requirement to include the Best Mode.

    It is enough, in the FtF world, outside the USA, where the inventor has freedom to choose whether or not to include his Best Mode but must then live with the consequences.

  67. I didn’t think it was necessary to say that. As for changing “critical dates,” going the CIP route would have no such effect, apart from, I suppose, patent term extension. Filing a CIP solely to correct a best mode issue raised by the examiner wuold not change the effective filing date of your claims. That is also a result of AIA which many people do not understand. Under AIA, compliance with best mode is not required in order to obtain the benefit of an earlier application. That’s why filing a CIP ends any best mode problems.

    I should also mention that if you reply to a best mode rejection by falsely stating that what was in the original application was indeed the best mode known to the inventor, then you could lose the protection of AIA. What I mean is that you just lied to the Patent Office, and the elimination of best mode for purposes of validity and enforceability will not save you in that scenario.

  68. one easy way around it

    There’s an even easier way.

    Since a patent must show how to make and use an invention anyway, simply argue that the way shown is the best mode known to the inventor. No CIP needed (especially since a CIP changes critical dates and should be a method of last resort).

  69. 282 is completely irrelevant during prosecution. It only becomes relevant AFTER the patent has issued. Not sure how you could possibly read 282 in the manner you are suggesting, as it refers to the validity of a patent–i.e., an issued patent.

  70. Um, yes it is. AIA did not remove the best mode requirement from 112, and a patent examiner can absolute reject an application due to a failure to disclose the best mode. It’s no different than any other 112 rejection during prosecution (other than the fact that it is next to impossible for an examiner to know if there is a best mode problem). Also, if an examiner issues a best mode rejection, one easy way around it is to file a CIP in which you add the best mode information.

  71. You can think of it in terms of quality

    Jason,

    The point being made is that there is a trade-off between “quality” – in quotes to differentiate between that quality that earns an enforceable patent and that quality that may be considered superfluous to such – and best business practice and that best business practice may dictate “quality” that falls short (and in certain types of inventions, like those not easily reverse engineered), may fall substantially short of the “Oh-my-heavens-we-must-disclose” alarmist view as protrayed by MaxDrei’s comments.

    Of course, it is a truism that the higher quality patent one has, the better such a patent serves as possible prior art and the more informed the public will be. Unfortunately, such a truism ignores the practical and pragmatic reality of the new – and in many ways, old – patent world.

    Hence, the comment that the posts by MaxDrei lack credibility. It just ignores a portion of reality that should not – and cannot – be ignored.

  72. No — at least not by my read of the statutes. The conditions for patentability are set forth in 102/103. 112 use to be included by virtue of 282. But, no more with respect to best mode. Therefore, the PTO has no legal grounds for denying a patent on the basis that it fails to disclose best mode.

  73. Max- distilled down to its essence, the argument is that including best mode in a patent specification makes the specification’s disclosure ‘thicker’ – in other words, it causes this piece of prior art to be more potent against future patenting. You can think of it in terms of quality – higher quality references are more useful when piecing together an obviousness argument – or in terms of the examples we give. If the best mode is not disclosed, future applicants will be able to patent that mode or obvious variations on that mode – subject matter that would not be patentable if the best mode had been disclosed.

    Jason

  74. My words only seem hateful and bullying to Nancy’s. Others view them as sage albeit critical.

  75. Max is quite right. If you disclose the best mode you have the option to amend to limit your claims to it by amendment. If you don’t, then you don’t.

    At the same time, if your best mode requires a 3/8 UNF bolt and you don’t disclose it, it is a relief to know that won’t be grounds per se for invalidation anymore, because it never should have been, and a claim that recites it could be a bit limiting.

    Bonus points for anyone who can work out why I chose a 3/8 UNF bolt as an example.

  76. Offhand, no it doesn’t. Other countries requirements are more akin to the written description requirement, which is not affected by the AIA. The UK requires ‘sufficiency’, which was determined by Rex v Arkwright in the 18th century, and that is an approximate analogue of written description. AFAIK, most other countries have something similar, but don’t require a best mode. For full disclosure, I am a Brit, but only qualified to practice in the US.

  77. How are they going to enforce it? If the examiner asserts a best mode violation, all the applicant needs to do is either challenge the assertion, or file a CIP where they add in the missing “best mode.”

  78. There are more devious shenagins to be expected with phantom inventors conveniently not being able to sign oaths and Big Corp Multinationals carrying on prosecution of inventions sans oaths.

  79. Use to be the boss wanted on patent applications to feather his own nest. Now it will be the common employee who will will routinely be left off in favor of the boss or bosses.

    The issue might be important down the road if an omitted inventor did not have an obligation to assign. He still might be able to grant a valid license to defeat a suit by the patentee.

  80. If people would wake up and realize that they are filing a patent application and not a doctoral dissertation or encyclopedia volume, then maybe examiners would have time to read the specification.

    As to McCracken, perhaps still drunk from Gay Day at pto last week?

  81. Go take your hateful, bullying words somewhere else if you have nothing of value to contribute. Go hang out with your buddy Romney or something, because America is moving past this kind of homophobic nonsense.

  82. Good comment SecretEuroPatentAgentMan.

    Clearly, at least through the PCT route, national law regarding best mode prevails.

    The question then remains, which countries (of those typically desired for patent coverage) have national laws requiring description of best mode?

  83. which are mine to know already

    Assuming facts not in evidence MaxDrei. Sorry, this post of yours lacks credibility.

  84. Stan,

    It’s a submarine alright – an anti-patent, pro-Trade Secret submarine, only surfacing as a defense after the person willing to go through the expense and divulgement of obtaining a patent attempts to enforce the earned patent will the Prior User Right submarine surface and torpedeo the economic value of the patent.

    Not only that, this anti-patent submarine free-rides on the hapless willing-to-share innovator, allowing the innovator – as mentioned by PURfect Freeriding – to “shoulder the patent obtainment and enforcement burdens, letting the competitor clear the field AND be inoculated from suit (AND have its client base be innoculated as well since PUR exhausts the patent rights of the true patent holder with NO benefit to the true patent holder).

    Surfacing years down the road compels a level of uncertainty that devalues patents as a whole.

  85. The closest thing that comes to mind is PCT Rule 5.1(a)(v):
    set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;

  86. Don’t even get me started about how the Big Corp Multinationals are getting away with phantom inventors.

    That Nancy McCracken won’t understand that either.

  87. Where I’m from, Nancy was not homorelated.

    It was whiny b_tchy compalin about nothing related.

    And you can’t tell what I’m arguing about? What are you whining about?

  88. Lighten up, dude. Jeez, I can’t even tell what you’re arguing about.

    And you know, calling people “Little Nancy” went out of style a few decades ago. Take that hateful, homophobic nonsense elsewhere.

  89. I wonder why it is we have all this discussion about best mode being eliminated from validity challenges when the same thing has happened to inventorship and there is no discussion whatsoever? Could it be that the powers that be want to avoid the issue? Is this an elephant in the room that we do not want to notice?

  90. What has obviousness have to do with ranting? Ranting is about things wrong, obvious or non-obvious.

    And why should you be puzzled by such?

    No, I think that your little Nancy side is showing.

  91. Your “thought” is as superficial as your posts.

    “What sort of a legal adviser are you by the way?” indeed.

  92. As PUR points out, our business is to maximise our client’s position. I dare say we can agree on that. In that context, your two ifs really do not impress me much. And I do understand very well the tension between including the Best Mode and accommodating the client’s wish to keep it a trade secret. I started learning back in the early 1970′s how to settle that with the client, and I’ve been practising it ever since. The level of risk tolerance is something for the client to decide, with my help. My personal risk tolerance is neither here nor there. What sort of a legal adviser are you by the way?

    Remind me, is there not something in the AIA about taking note of how FtF works in Europe? If so, your judges will I dare say be open to argument on that, when it comes to issues like PUR which are mine to know already and yours yet to find out. I know already what it’s in there for.

    If you really want to maximise your client’s positions in future then, must not you too to be mindful of FtF thinking?

    Just a thought.

  93. I’m not sensitive, just trying to figure out why you’re ranting over what should be blindingly obvious.

  94. Your strawman is showing, MaxDrei.

    If you published with your filing, then the fact that your competitor did not derive avails him not.

    If your best mode is merely “obvious” (the legal definition, not the pragmatic, real world definition) over your disclosure, then your competitor will not obtain a patent.

    And yes, surely and really PUR is there as a saving grace. If it were not, why bother put it into the law? It was put in specifically as a saving grace. What do you think it is there for?

    You do not seem able to grasp the value of maintaining a Trade Secret in this conversation.

    You seem to hold the view that any chance of a competitor discovering AND filing on the Trade Secret AND that Trade Secret being deemed not obvious AND all this happening within a year so that PUR does not attach necessitates abandoning that Trade Secret.

    You seem to have a very much too low risk tolerance.

  95. What do you mean by “this” business, I wonder.

    The business of maximizing the client’s position.

    What other business is there?

  96. I am trying, believe me. Now it’s your turn.

    Best case: You have a blockbuster Best Mode and decide it shall be kept as a trade secret. You take to issue a US patent with claims that cover your secret Best Mode and are robust against validity attacks. Your Best Mode remains a secret.

    Worst Case: Without deriving it from you, a competitor files at the USPTO, just a short while after you did. But his filing includes a written description of something that is more or less the same as your Best Mode. He gets to patent that Best Mode and you infringe.

    How do you know what your competitor is doing? How do you know whether to put the Best Mode in your patent filing? How can you eliminate the risk of ending up in the Worst Case scenario?

    BTW, what is PUR? You are not really supposing that the AIA prior user right will save you? Surely not. Really?

  97. If there is one thing your client is paying to protect, it’s his Best Mode, isn’t it?

    You are being a bit daft on this MaxDrei.

    Try to think in more than one dimension.

    Try to think patent rights and Trade Secret/PUR. If you have BOTH, you are better off having just one, isn’t that obvious?

  98. Well PUR of course I know that the failure to include the best mode is no longer a ground of invalidity. And “interference” has gone too, right. Nobody is any longer interested in which of the competing parties was “first to invent”. Looking forwards, it’s an irrelevance, right. Instead, the only thing that counts is who was “First to File”. You tell me I have no business being in “this” business (whatever that is). My business has long included resolving priority between rival filers, under various FtF regimes. What do you mean by “this” business, I wonder.

    Tutor, the “best” specification is going to be helpful in court, sure. But will it be enough? You can have the “best” specification in all the world, but if it lacks a written description of the particular invention being fought over, and the other fellow has just as good a specification but his is different and better in that it does include that key written description, then you’re in trouble nevertheless, for leaving out your Best Mode, aren’t you?

    If there is one thing your client is paying to protect, it’s his Best Mode, isn’t it?

    I hope to read something from the authors of the Paper, once they have scrolled through the thread thus far.

  99. Max: “How can he know that it will always win the day.”

    Because the claims are required to be interpreted in light of the specification. Now that may not mean much with the typical examiner, who may not even read the specification. And depending on the panel you draw at BPAI, may or may not help. But once you get to Court it’s exactly like “simple questions” told you.
    The best specification wins the day.

  100. Andy,

    Please be specific about this “ineqitable conduct” problem. “Best” is o so very hard to (1) actually define, given the o so many possible trade-offs, and (2) o so very hard to prove.

    All one needs is a colorable argument to not include a favored (who really knows if it is “best” anyway?) mode, reserving that mode for a Trade Secret. Any lawyer worth their salt can create such an argument.

    Did I mention that the AIA eradicated the phrase “with deceptive intent” from the law?

    Now can you figure out why?

  101. That “risk” has been greatly reduced with the passage of the AIA. In more ways than one.

    If this is not evident to you immediately, then you have no business being in this business.

  102. Simple writes:

    “…having a better specification…..and still not include best mode”

    is what

    “..wins the day”

    To which I reply:

    Perhaps, and perhaps not. It all depends. How can he know that it will always win the day. To return to first base: as I said at the outset, you pays your money and you takes your choice, whether to include your Best Mode or deliberately withold it. All at your own risk.

  103. Repost–hopefully this is not a duplicate.

    I see an inequitable conduct problem if an applicant intentionally withholds the best mode. So maybe the elements of the defense are different, but the statute still has meaning during litigation, i.e. even absent enforcement by the PTO.

  104. “How likely is that?”

    There are ways of making you talk.

    “Promoting Trade Secrecy: thank you AIA.”

    Indeed so, congress indeed took a big step in the a rse wrong direction with this provision. If anything they should be requiring more disclosure, not less.

  105. Don’t be so sensitive. I did not infer that you implied such. I merely fine-tuned your observation into the precise level that the subject will be broached.

    Which is never.

  106. “fell into their lap”

    How likely is that? The Office would have to prove that the appliant KNEW and INTENDED the non-included mode was not just another mode, but the “best” mode. On top of that, the PTO could only enforce during the time period of application prosecution, where alterntive modes for comparison simply are not likely to be available.

    In the real world, any attorney worth their salt can obfuscate any mode with trade-off situations to defeat a best mode challenge.

    There will be exactly ZERO cases of best mode falling into the PTO’s lap. ZERO.

    There is practically no risk of maintaining Best Mode as a Trade Secret if that Best Mode is not easy to obtain from what must still be shared to obtain a patent. The new game in town is to figure out how best to get the best of both worlds, the patent and the Trade Secret worlds.

    Promoting Trade Secrecy: thank you AIA.

  107. RM,

    Only if the originator could prove he had been practicing it all along (as in, showing it be a PUR).

    If he can play that game he can hold the best mode as a Trade Secret and force the competitor to shoulder the patent obtainment and enforcement burdens, letting the competitor clear the field AND be inoculated from suit (AND have its client base be innoculated as well since PUR exhausts the patent rights of the true patent holder with NO benefit to the true patent holder).

    Promoting Trade Secrecy, just another benefit of the AIA, the best legislation that the Big Corp Multinationals could buy.

  108. Ah, I see you want to expand the point to include what you may want to amend into the claims.

    Now you are talking about added matter and not just about best mode. But in that reagrd, merely having a better specification, which one can have and still not include best mode, is what wins the day.

    Sorry, your examples do not fit the premise you are trying to make.

  109. So someone could read the patent, think of the best mode himself, convince the PTO that it’s a non-obvious improvement, and get on a patent on that himself. Then he could enforce it against the patentee’s competitors (but not against patentee of course, who would defend himself by saying he had been practicing the best mode all along).

  110. Anon-

    I believe you are Correct, sir! Funny about that, because it represents sort of a submarine Gotcha factor, but generally not discovered until After the litigation race has begun. Way too late, case closed.

    SD~

  111. Test-

    I think you are correct. If Best Mode exists anywhere else, why would a patent agent or attorney ever decide to Not suggest one in the applications they write here in the US? Sounds pretty silly for Congress to even suggest such a thing as dismissing Best Mode as irrelevant, much less getting it enacted into law.

    SD~

  112. Very well said Jason. Like the 101, 102 and 103 language, it seems to indicate that they had very little comprehension of what they were actually doing. Hopefully Kappos and et al will suggest some *technical amendments* to Congress, to try to fix the huge mess they wrote, apparently way too hastily. Leahy and company probably had major sponsors champing at the bit to “git er done” before they had to start all over again next year.

    SD~

  113. Imagine the PTO search throws up close art. You want to amend down to something more specific, something that isn’t disclosed in that art, something that is novel and not-obvious and would still be infringed. But can you do it? Might it mot make a decisive difference (under First to File law), whether the specific subject matter that provides the written description to substantiate such a narrower claim, written description which is not found in the art but is embodied in competing products, is there to draw upon in your originally filed specification?

  114. They can’t possibly review best mode requirements, and the PTO admits as much, but if a clear best mode violation fell into their lap, you can be sure they’d enforce it.

  115. With Best Mode in there you are more likely to come through to issue with a not invalid claim that the other infringes

    Why? Claims are claims and you cannot import anything from the specification into the claims. Best Mode should make zero difference.

  116. If it’s still in the statute but not enforced by the courts, then how does it work and have we necessarily lost its benefits?

    A patent can’t be invalidated in court for failure to disclose the best mode, but the PTO can still demand it during prosecution, right?

  117. Okeh, I read the paper.

    Sometimes one can be said to have “hit it out of the ballpark”.

    Other times, not.

  118. More than unlikely.

    The PTO has publicly, and on more than one occasion, announced that they will not enforce or even review the best mode requirement.

  119. Test, I don’t know any other jurisdiction that requires Best Mode. But it is inherent in every jurisdiction that you omit Best Mode at your peril.

    In First to File, you don’t know if you are first to file till 18 months later, after all the earlier filings have been published. Suppose you file and another, independently, filed for much the same invention at much the same time. With Best Mode in there you are more likely to come through to issue with a not invalid claim that the other infringes. But if that other included his best mode in his spec, and you left yours out, you could end up as an infringer of his not invalid claim. Not nice to contemplate. Who will you blame?

    So, you pays your money (to draft and file an appln) and you takes your choice (whether or not to include your best mode). That’s it. What could be simpler?

    Is all of this not inherent in any patent system? You choose whether to patent or go the trade secret route. But for the following 20 years you will have to live with your decision.

    Although I have read your Paper, Lee and Jason, sorry, but I still don’t get your point, just how a Best Mode requirement “does help to establish the level of inventiveness necessary for an optimal patent system”. Perhaps the ongoing thread will enlighten me on that. I do hope so, because the discussion would then be interesting.

  120. Although it is unlikely to do so, the PTO can still enforce the best mode requirement.

  121. Does anyone know offhand if there’s an analog to the best mode requirement in many foreign jurisdictions? (And I don’t mean an analog to the written description requirement, because I’m pretty confident that’s present in every jurisdiction.)

    From where I’m sitting, very few apps are filed US-only.

    So, even if the best mode requirement doesn’t exist in the US, if it exists in other jurisdiction, it might as well still exist.

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