I've been talking about the conflict the AIA has created between lawyer and client with respect to Best Mode for about a year now. Let me walk through it briefly, but e-mail me if you want my article on this.
- The AIA Still Requires Disclosure of Best Mode.
I realize some folks are still debating whether the best mode requirement is still there: it is. The AIA left the requirement in place. Best mode is a required part of the specification. Indeed, Congress when enacting the AIA clarified that if even one inventor had a best mode it had to be disclosed; it didn't eliminate the requirement. Further, Congress in enacting the AIA stated that the best mode remained a required part of the quid pro quo. Finally, when asked, the USPTO has said that statutory changes (discussed next) concerning invalidity don't affect the USPTO, since it doesn't determine validity, it determines patentability.
2. Omitting the Best Mode has No Consequence on Validity or Unenforceability.
Congress made it clear that the omission of best mode does not affect validity or enforceability of a patent, and made it clear that a claim cannot be canceled for failure to include the best mode.
3. So, Congress may have Created a Conflict of Interest
A patent must contain the best mode to be issued. A patent lawyer cannot fail to disclose the best mode. Yet, failing to disclose it will have no invalidity or unenforceability consequence. (I've wondered about misuse, about state law claims, and, of course, perjury.)
Hence the conflict: suppose the client does not want to disclose the best mode. The lawyer must explain, of course, that failing to do so will not result in invalidity or unenforceability. But the lawyer must insist that best mode be disclosed.
Here's my effort at a fun illustration of a lawyer-client having a discussion on this (one day, I'll learn how to use these fancy embedding tools):
Thoughts?