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Best Mode Changes with America Invents Act

Posted Wednesday, January 18, 2012 by Mike Cicero

Whenever an inventor seeks patent protection, that person is agreeing to disclose valuable information to the public in return for a temporary monopoly over practicing the invention by way of exclusionary rights. During the time period of that inventor’s exclusionary rights the public can learn from the inventor’s disclosure and eventually, when the patent term expires, actually practice the invention. This system of exchanging information for rights is critical because it provides inventors with an incentive to contribute to the collective knowledge of society which, ultimately, helps to maximize social welfare.

To ensure that the public receives sufficient information in exchange for granting patent rights, 35 U.S.C. 112, First Paragraph sets out three distinct requirements which must be met for an inventor to obtain a valid patent. The First Paragraph’s Best Mode requirement states that “[t]he specification…shall set forth the best mode contemplated by the inventor of carrying out his invention.” This requirement aims to provide a disincentive for inventors to disclose a less efficient mode to the public while saving the best mode for themselves. Patent applications can be rejected for failure to disclose the best mode and, previously, issued patents could be held invalid during an infringement lawsuit if shown that an inventor withheld the best mode. While both of these results create a disincentive to holding out, the stronger of the two was probably the latter.

The America Invents Act, signed into law on September 16, 2011, reduces the impact of the best mode requirement immensely. Under the new law, an entity being sued for patent infringement can no longer raise the defense that the patent is invalid due to the inventor withholding the best mode from the patent’s disclosure. Essentially, if an inventor can make it through examination without facing a rejection based on best mode requirements, the inventor is home free notwithstanding having held out. Moreover, rejections of applications for failure to disclose best mode during examination are rare simply because the examiner is in a poor position to discover what an inventor is withholding. So has the Best Mode requirement been eliminated? No, it remains a requirement under 35 U.S.C. 112, First Paragraph. However, it might prove to be nearly unenforceable from now on.

Because the public still wishes for and can benefit from the disclosure of a contemplated best mode but has lost a huge path of securing this information, maybe it is now more accurate to refer to best mode as a request rather than a strict requirement.

Best Mode Changes with America Invents Act  ›› Ruttler Mills PLLC