More on the Death of the Best Mode Requirement

By Jason Rantanen

Despite (or more likely because of) the effective demise of the requirement that patent applicants disclose the invention's best mode at the time of filing the application, several academic commentaries on the subject have appeared recently, including two that I co-authored.  Below I summarize our most recent work along with two other notable recent articles on best mode.

  • In The Pseudo-Elimination of Best Mode: Worst Possible Choice?, a short essay recently published in the UCLA Law Review Discourse, we argue that by equivocating on the best mode requirement – eliminating it as an argument against validity during an infringement action while technically retaining it in section 112 – Congress may have not only failed to achieve the goal of leveling the playing field between U.S. and foreign applicants, but may have tilted it from uneven in one direct, if it ever was uneven, to uneven in the other.  The article can be downloaded here:  Our previous article, In Memoriam Best Mode is discussed here.
  • In Patent Reform and Best Mode: A Signal to the Patent Office or a Step Toward Elimination?,  Ryan Vacca provides a detailed history of the best mode requirement up through the America Invents Act, before examining whether the Patent and Trademark office has the ability to enforce the requirement itself.  Professor Vacca concludes that the PTO's methods are unlikely to be effective, and recommends that "if Congress believes it made the right decision in the AIA concerning best mode, then Congress should simply bite the bullet and formally eliminate best mode as a requirement for patentability."  The article can be downloaded here:
  • In Best Mode Trade Secrets, Brian Love and Christopher Seaman conclude that it may become routine post-AIA for patentees to concurrently assert both patent rights and trade secret rights in certain types of cases.  The authors identify undesirable consequences of this change, and suggest an approach courts could consider in order to limit dual claims of trade secret and patent protection.  The article can be downloaded here:

37 thoughts on “More on the Death of the Best Mode Requirement

  1. 37

    Ya with the patent system in its present state I can see the need to eliminate best mode requirement. One it allows everyone to participate in the patent system with lack of techinologcal knowledge youd need 200 years education to qualify to prepare patents in all fields of invention. And second it may allow a trade secret situation that prevents pirtateing especially if there not requiring companys manufacturing in dispute situations to deposit into court supervised accounts until dispute reslution. Shuting down the company producing product makes no sence in situations where the inventor is starting out and indegent they need revenue streams to get going and creating more especially me because then the economy can restart due to large potential volume inventions. If they would combine that with lockering and immediate global novelty check and they may start to get patents in the right name for once in 182 years causing a genuine incentive to create instad of the present neglegent primative regessive brutal justice obstructing AIA

  2. 34

    And by the way… I have the exact writing of the first one… as a matter of fact so does an organization i sent it to. HAAH! Sadly one was not detected before it crashed. And that Lap Top cost me a lot of money. But so did the fake Bankruptcy I was in. do you have any idea who stole my Lamp that i won on Shopgoodwill? After paying for it by mail, someone went to the Michigan Goodwill Store and hurriedly paid Cash before my money got there. But what is stolen from me has no boundaries. Luckily I am not in North Korea or they would have my Kidneys.

  3. 33

    I know I do. This is the 4th Computer they have messed with. Three are completely destroyed. It was done to keep me from papers in my paperport. and they removed the telling ones, also to change what I wrote, to steal what I wrote, and to keep me from replacing an Instrument that I need to send AGAIN to an Atty.And whem I have said something that was damaging to the people keeping me in the BOX they would not allow me to say it on Patentlyo.
    Sadly, I so believed a Family member that when he told me a person he worked with and was in business with was denied a Patent for being to close to another invented. His description made me realize the Guy was being screwed… So I look the other day and see that the person I trusted most in this world, the one that told me he never lied has been lieing to me my whole life. And if he was in front of me I pity him for what I may say and do. He is a disgusting excuse for a human being along with a few more that claim a relationship. Sadly they believed what they were told because they were scummy greedy lousy excuses for Family. And I have paid the price with my life! And the first virus was being controlled by something that sounded like TAMAI something like AKAMI. And the next one was controlled

  4. 31

    Hi Ned. How long ago is “used to”? Pre 1980 perhaps? I ask because the EPO approach to obviousness in the area of compositions of matter renders it well nigh impossible to meet the inventive step requirement if you have no utility.

    See the HGS (Human Genome Science) case, where utility was disputed right up to the UK Supreme Court. In the app as filed, there was much speculation about possible utilities. The stuff would plausibly cure most every disease under the sun, one gathered. Quite what the “Best Mode” is, in such cases, quite eludes me (I’m also not a pharma guy).

    English High Ct revoked and so did the Ct of Appeal. But the Supreme Court (not specialist patents judges) found utility, citing EPO precedent and invoking i) the need to harmonise and ii) lobbying from the biotech industry. After the supreme court decided, Glaxo bought HGS.

  5. 30

    Are you familiar with the ridiculous standards that your judiciary has set on enablement rejections? The burden of proving that someone couldn’t make one within a half-year or a year or whatever is near impossible to meet. The entire problem in the case is that I believe it to be possible to make such a layer, I simply am not aware of it at that particular moment when examining. That doesn’t mean that even I couldn’t figure it out in a month or so with a fully stocked lab.

    Bottom line, “the judiciary being ret arded” is why not.

  6. 29

    Not to mention, they’ve become a platform for anti-rodent rhetoric. If I want to help myself sleep, I’ll move on a nice bit of cheese. I don’t need to be tazered, thank you very much.
    link to

  7. 28

    Max, one of the problems Euros use to have in their US filings relates to utility. One apparently could claim a composition of matter in Europe without disclosing any utility. Such applications typically ran into trouble in the US.

    Is the failure to disclose utility for a composition permitted today in Europe? (I need to ask, as I do not practice in the chemical arts.)

  8. 23

    Like it was yesterday, he said they both are responsible. They both made mistakes! The mistake was stealing my IP and then hooking you because they knew you were GREEDY THIEVES. And the Greedy Family mistake was being hooked by a SICK DEAL they made with Karl. Okay they said you give us that, and we’ll trash her. And have the Family so afraid of what they did they will continue to nail her CASKET, not unlike “HOUSE OF THE USHERS”

  9. 22

    OT, but Jason, can you check into fixing the link that shows more comments on the CLS Bank v. Alice thread?

  10. 20

    HH and Karl hooked you good. he did the nasty then she got you to join in and take control of their fraud!lololololo lulz lulz and that is why OED DID NOTHING! THEY MADE A DEAL LULZLULZLULZ!

  11. 18

    Red Herring Alert:

    But lecture me if I’m wrong. How often do pharma patents go down on failure to disclose the best mode?

    Going down on failure to disclose has nothing to do with the strategy to not include under the new law.

  12. 17

    Apart from the “preens” dig, an excellent observation there, that the world drafts to meet the “gold standard” namely US law, because the US is (still) the biggest and most profitable market. In consequence, I gather, Big Corp will suddenly change its drafting, leaving out the “best mode” where, up to now, it always included it.

    Except that I don’t believe it. Take pharma/biotech. How much difference to its drafting style does the mandatory American “best mode” disclosure requirement make. Not one jot, I shouldn’t wonder.

    But lecture me if I’m wrong. How often do pharma patents go down on failure to disclose the best mode?

  13. 15

    Until such change is made I cannot see anyone drafting a patent application is going to gamble on this.

    It seems there is a best mode requirement also in Japan, a little different from the US requirement. PCT rules mantion it. TRIPS Art 29 also states that “…may require the applicant to indicate the best mode for carrying out the invention known to the inventor…”

    The language suggests the US put it in, I am not sure how quickly that can be removed.

  14. 14

    Either that, or a world of difference as the single and probably only reason for including Best Mode is no longer there, the entire world practice may be affected.

    It is clear no matter how much our EP-Oriented preens over the EP system, one of the largest markets for intellectually protected items is the US and since patents are territorial, Big Corp geared all their world wide filings to be amenable to US filing pecularities.

    Rather than now continue in pecularities, this may affect all filings everywhere. Big Corp has gained agency takeover.

  15. 13

    For as long as there have been patent attorneys drafting specifications, there has been a dialogue between attorney and client about what to include and what to gloss over. Attorney warns client of all the many and various consequences of omission, and inventor and/or client decides, based on that advice and on the business interests in play, what to tell the attorney, and whether to take the risk of leaving that stuff out of the specification. The importance to the business of NOT revealing confidential and valuable know-how in the published patent specification invariably trumps the risk of a best mode crash.

    The “best mode” requirement is one factor, in the USA. But all the other factors still apply, equally, all over the world. The more you can envisage asserting your patent, the more detail you will include. If you (CN, JP?) are not going to assert your patent in the USA, how much do you care about the Best Mode requirement?

    With speculative conceptual internet inventions and business methods, does the Best Mode requirement have any meaning?

    So, frankly, I don’t see how abolishing the Best Mode requirement will make much difference, in everyday practice.

  16. 12

    I realise this is a US centric forum, to the point that PCT news with broken links are hardly noticed. However, if you were to file a PCT application you might wish to folllow the PCT rules, specifically Rule 5.1 Manner of the Description.

    This part specifically:
    (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;

    I am not sure about the status in all the countries in where my clients wishes the applications to be brought into national or regional phase, so I always make sure I have at least a sentence about best mode.

  17. 9

    “You got my number. Again.

    Translation: “MM cannot show an answer in law. Again.”

  18. 8

    Show me in the law the requirement to commercialize and the prohibition to “troll” with a patent.

    Translation: “You got my number. Again.”

  19. 7

    I’m never going to commercialize this ‘invention.’ Are you kidding? I’m going to troll with it.

    Show me in the law the requirement to commercialize and the prohibition to “troll” with a patent.

    If you cannot, then STFU.

  20. 6

    I am waiting for applicants to try to be tricky and not disclose their best mode


    This happens every day and has been happening forever.

  21. 5

    I am waiting for applicants to try to be tricky and not disclose their best mode, but pursue claims that they believe cover their best mode. And later find out that those claims do not cover their best mode and/or that the prior art is close and they need the details of their best mode to distinguish over it and/or they need secondary considerations to overcome the prior art and their secondary considerations are based on their best mode and thus are inadequate.

  22. 4

    Translation: Wah wah wah, my job is hard

    Translation: “That was me who tried to get the claim through without revealing the relevant art and how to make the method actually work. I try to do that all the time because everybody else does it. Besides, I’m never going to commercialize this ‘invention.’ Are you kidding? I’m going to troll with it.”

    This has been another edition of Understanding Blogtrolls and Their Curious Ways.

  23. 3

    I would like to see one scholarly article on the consequences of eliminating 102(f). If someone who has not invented the claimed subject matter has obtained the patent, it is a fraud on the public and a public offense. A criminal prosecution and a small fine hardly is a remedy if the criminal can still enforce is ill gotten patent against the public.

    Why in the world are we looking a mole hills when there are mountains?

  24. 2

    QQ QQ

    Translation: Wah wah wah, my job is hard and I did not get a big raise because I missed my quota and no, spending all my time writing on Patently-O has nothing to do with my missing quota because I said so.


  25. 1

    What is sad that instead of getting rid of the best mode, they needed to tighten up on the best mode req and drag some particulars about the best mode on out of guys.

    Some people are simply too skimpy in their disclosures to allow for meaningful examination. For instance they’ll come in and tell us all about a new specifically shaped/functioning piece of glass as has been claimed that has a certain amount of x in it and then fail to mention just how you might make a piece of glass like that. Indeed, I’ve seen some cases where the examiner was literally discussing such a situation and the attorney didn’t want to tell her because “then she’d just go find that process and make a 103”. Be that as it may, that is important information both for the examiner trying to examine the case and relates pretty strongly to what we all are now aware that the inventor knew at the time of filing and failed to tell us.

    And yes, don’t bother telling me that it is my job to try to suss out how you would make such a layer and make appropriate 103’s. I know that. But I don’t have a fking fully stocked glass lab to go and see about just how much x goes into a glass layer made by the hundreds of old processes for making glass. Which in essence let’s them skate unless I’m successful in sussing out how to make such glass from prior art only tangentially related to the actual invention.

    And that isn’t a particularly rare occasion that such a thing happens. It is fairly routine.

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