By Jason Rantanen
Professor Tun-Jen Chiang's post on best mode (below) argues that Congress must necessarily have intended that patent applicants would not disclose best mode, given that it was aware of the potential consequences of removing litigation enforcement. Thus, Professor Chiang concludes, Congress not only abolished best mode, but then went about "lying" about it. I have serious doubts about this conclusion.
Despite being styled as a reply to Professor Sheppard's description of Congressional thought about best mode, Professor Chiang misses the fundamental point of Professor Sheppard's post: that although Congress recognized that removing the litigation mechanism for enforcing best mode might result in reduced compliance, there remained alternative mechanisms – which Professor Sheppard discussed – for encouraging applicants to comply with the best mode requirement.
While I personally question the efficacy of the alternate mechanisms for enforcement – which rely primarily on criminal sanctions that, historically at least, have been rarely employed even to deal with more significant misconduct – it is clear that Congress has a higher view of these types of enforcement mechanisms than I do, especially given its treatment of inequitable conduct in the America Invents Act. Thus, I find it difficult to accept Professor Chiang's dichotomy that either Congress must have been "dumb" or "lying," as well as his analogy to a child with matches. This issue is far more complex than such an oversimplification allows, and it is entirely reasonable (and probably far more accurate) to recognize that Congress was attempting to balance a difficult issue: the costs of patent litigation versus the need or desire for disclosure of best mode, and elected to proceed by relying on alternative enforcement mechanisms that, while perhaps less often enforced, might potentially provide equal deterrence through more severe sanctions. If one must use an analogy, it is more similar to giving a teenager a car, explaining that speeding might result in a criminal penalty, while nevertheless providing reassurance that you will not take away the car if he or she is caught speeding, than it is to a child with matches.