The Best Mode Requirement and the Conflict of Interest it Creates

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.

  1. 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):



About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

15 thoughts on “The Best Mode Requirement and the Conflict of Interest it Creates

  1. 15

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  2. 14

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  3. 13

    “Since the patent that issues with a pirate as a named inventor is nevertheless valid”

    Valid yes, but ask yourself, who owns that valid patent and who has standing to enforce that valid patent? Can the pirate be prevented from profiting from his inequitable actions? If it could be shown that the pirate is not the inventor, the court could still present a practical impediment to profiting from such misdeeds.

  4. 12

    Response to Anon: You might be right that “lying” alone is IC, even though the patent may be valid. The issue is unclear however, as the Therasense case limited IC to issue of patentability. Since the patent that issues with a pirate as a named inventor is nevertheless valid, I don’t see how IC is involved at all.

    Even so, the situation seems to be exactly like the best mode issue. The inventor is a pirate. Yet he can file and obtain a valid patent. What are your duties as a practicioner?

  5. 11

    Inventors and practitioners with Rule 56 obligations that tell the PTO they have complied with the #bestmode requirement but didn’t committed inequitable conduct, right? Furthermore, if applicants provide a disclosure with enough species to support the genus that covers the best mode, but don’t disclose the best mode, the applicant cannot get the genus claim yet argue the best mode is just a trade secret. I believe congress did not intend such a result.

  6. 10

    I don’t understand these concerns at all with regard to conflct with the client.

    AIA made it clear that the requirement to disclose best mode is unchanged. Whatever the penalties for not disclosing best mode before AIA remain with the sole exception to no longer being able to use such as an affirmative defense against infringement.

    Knowing that the law maintains the requirement to disclose the known best mode, any client who informs me of the best mode and then tells me to leave it out, gets a lovely phone call from me saying I won’t do and if the client insists, I fire them. All I have is my reputation and I refuse to sell it. Let some other sleazy practitioner file and prosecute the application, not me.

    I see all this dancing around as looking for excuses for when someone gets caught out for being sleazy. I’ve been a biotech/pharma prosecutor for almost 18 years, and I have never had a client instruct me to leave out the best mode, or even bring up the issue in the first place.

  7. 9


    First, glad to see you on this blog. Consider the following:

    1. Client insists that the best mode not be included. An application is prepared excluding the best mode.

    2. 2-1/2 years later and after publication of the application, the USPTO issues a rule 105 request for information, asking whether the best mode has been submitted. Inventor’s attorney replies that the best mode has not been submitted.

    3. USPTO rejects all claims under 112 for failure to present best mode. Application cannot be corrected (new matter) and dies because of prior publication.

    What have I got wrong?

  8. 8

    And Tom I’ll have to think about your point because that may be a great one – the prior use defense.

    Ned, I have tried for remain somewhat ignorant of the bulk of the AIA provisions… those days are ending, and now you’ve given me another fun thought.

  9. 7

    My example of the conflict is in the video: claim it, disclose it generally, but don’t give a hint that you know that X% of an ingredient is the key, and figuring out X% will take a year.

    The way most people are reading the statute, the BM violation itself would not result in invalidity or unenforceability. So, client will not want to disclose; lawyer is obligated to do so, and to explain the consequences of not doing so to the client.

    The real issue lurking is: does the statute really mean there’s no consequence? Therein lies anon’s question — is it still inequitable conduct to lie on an oath… if it’s about best mode or implicitly so?

  10. 6

    If I am not mistaken, the problem that Ned wishes to focus on is “he himself learned of while consulting for a third party,” with “learned” basically meaning “did not invent himself.”

    Even under the AIA there is an oath, right? And it is still inequitable conduct to lie to the Office, right?

  11. 5

    What’s the conflict? A disclosure without best mode would not presumably be within the “publicly available” specification, thus not within the claim scope. This turns into an infringement, claim construction question. In chemical practice, this would be a species with an extra advantage. But how would the public know? Essentially it sounds like an election. The applicant is electing instead of patent protection trade secret protection or something along those lines. In Europe this would allow later selection invention filing directed to best mode embodiment. Under AIA it would allow later first filer who figures it out independently, to separately patent it. Maybe Applicant would get prior user defense, but nothing to stop competitors.

  12. 4

    Similar to the best mode issue, but a client approaches you with an invention which is a colorable variation on an otherwise secret product or process he himself learned of while consulting for a third party. (This is an actual case, so it is not academic, at least not to me.)

    Today, under OddzOn Products, Inc. v. Just Toys, Inc., 122 F. 3d 1396 (Fed. Cir. 1997), that variation is clearly unpatentable under 102(f). But 102(f) is repealed as of March 13.

    I assume the best advice to the client is to file his patent application after March 13, in which case his piracy goes unpunished.

    But is this at all ethical even so?

  13. 2


    My discussions lead me to the opposite conclusion. Since having started to talk at CLEs about it to lawyers a year or so ago, I’ve noted the number of practitioners who approach me afterward and tell me that it is a problem. My sense from those conversations is it is industry specific — pharma and chemical inventions are more likely to be susceptible to this than some others, for example.

    I’ve heard talk from people that the PTO may start doing more requests for information, seeking express confirmation that the best mode is disclosed, fwiw. That was 3rd hand hearsay, however.

  14. 1


    You have raised this very good point previously, and my reaction has been to wonder how much of a problem this is in actual practice. Do you have any sense? (I recall that you previously stated that you had heard one or more lawyers tell you that a client asked them not to disclose).

    In my own ongoing study of patent prosecutors based on interview data, I don’t see this as a problem. It may be that it’s too new or that my study is still in-progress, but I am very interested to hear more about the scope of this potential problem in actual practice (e.g., how often does this conflict arise–rarely or routinely; if it does arise, what types of clients (size, industry important?) does it come from, etc.


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