In-Depth Look: Is Altering the Best Mode Requirement the “Best” Decision?

June 30, 2012
Monday, April 2nd 2012 by Aaron K. Reinhardt
In 2011, President Obama signed the Leahy-Smith America Invents Act into law.  The most striking change this law brings to the patent system is the change from a first-to-invent to a first-to-file system.  While this change has certainly receives the most attention, it might not have the greatest impact.  The American Invents Act also eliminates the best mode requirement as a defense in patent litigation. This has many potential impacts. This change has the potential to cheapen litigation and allow more time to be spent on other more relevant issues, as many infringers use the defense tactically.  However, eliminating this requirement as a defense has the potential to open the system up for rampant abuse because the PTO is not in the best position to determine the best mode for practicing the invention.  This potentially limits the amount of disclosure received by the public, an essential element of the bargain underlying the patent system. 
On September 16, 2011, President Obama signed in to law the first major reform to the American patent system in over 60 years—the Leahy-Smith America Invents Act.  Many lawmakers have argued that America’s outdated patent law system has become a barrier to innovation, and thus reform was needed to spark innovation across the country in order to create new high tech jobs.  The most drastic reform involves the infamous switch from a first-to-invent-system to a system that rewards the first-inventor-to-file. The key concept of a first-to-invent system is that the first inventor to reduce the invention to practice receives priority in the patent, even if the same, or a substantially similar, invention is later invented by another party.  Under the America Invents Act this provision is no longer included, and after March 16,2013, between two parties who have invented the same, or a substantially similar invention, the first party to file with the USPTO is awarded priority.  While this change has been the center of attention concerning the amended law, the effects will probably not be substantial because two inventors file an application for the same invention less than 20 times each year.  However, the America Invents Actcontains many other important reforms—including the elimination of the best mode requirement as a defense to patent infringement.
The best mode essentially represents the inventor’s optimized conception of the invention or, more specifically, the inventor’s “preferred embodiment” for practicing the invention.  The best moderequirement represents one part of the “bargain” underlying American patent law—where an inventor receives the exclusive right to their invention in exchange for full public disclosure enabling one of ordinary skill in the art to make and use the invention.  Essentially, the best mode requirement prevents inventors from patenting their invention while preserving the best mode exclusively for their personal use, giving the inventor a monopoly on the invention and protection of the best mode for practicing that invention as a trade secret.
Eliminating the best mode requirement as a defense will certainly have some positive impacts on patent litigation.  Litigants will no longer be able to abuse the requirement in order to waste time and money in an attempt to expand the discovery process.[1] Moreover, this change will be a move in the direction of harmonization between the America patent law system and many foreign patent law systems.[2] In fact, this change in law should allow courts to focus on issues often considered more important.[3]   However, this amendment drastically reduces the ability to police this important requirement that prevents inventors from denying the public the benefit of the bargain underlying the patent law system.
As inventions are not known to the public at the time of filling, the USPTO does not possess the requisite information during the patent application process to make the determination whether the inventor has disclosed the best mode for using the invention.  In fact, the USPTO openly admits that they cannot effectively police the best mode requirement during the application process.[4]  Common sense suggests that this is determination should be more appropriately made at a time after the grant of the patent because the inventor has initiated use and licensing of the invention.  Moreover, this determination is probably best made by competitors in the field—potential infringers—rather than the USPTO which must observe many different industries.  Many may argue that there are mechanisms in place to deter concealment of the best mode for using the invention.[5]  One such mechanism being inequitable conduct which prohibits and inventor from making a material misrepresentation during the examination process.[6]  However, because inequitable conduct requires an “overt” misrepresentation rather than “concealment,” the doctrine does not suit policing the disclosure of the best mode requirement.[7]
Without adequate safe guards, namely allowing the best mode requirement to be used as a defense to invalidate patents, inventors can now abuse the system more freely.  This is especially true as “[i]nventors realistically will not disclose more that they are absolutely required to divulge.”[8]  Furthermore, there is now a potential for inventors, especially parties with a high degree of legal sophistication, to obtain dual protection for their inventions—one in patent and one in trade secret.  For example, an inventor might file for a patent intentionally failing to disclose the best mode and this will likely not be detected by the PTO with the changes to the current law, as discussed above.  The inventor will then use the best mode of the invention and conceal this use protecting it as a trade secret.  In the event that another inventor independently discovers this preferred mode the first inventor will initiate suit against the second inventor under the “doctrine of equivalents,”[9] and thus this lax in protection from abuse awards the inventor dual protection.  However, the fact that the public may often not receive the inventor’s best mode is the probably the most troubling potential impact.
The patent system is predicated on the idea that a limited monopoly will be granted only in exchange for the full and complete disclosure of the invention, which includes the best mode for practicing the invention.[10]  Eliminating the best mode requirement as a defense potentially limits the disclosure given to the public.  As mentioned above, it will be easier to now conceal the best mode for practicing the invention thus allowing for instances where the public does not get full access to the invention depriving the public of the benefit of the bargain.  This has the effect of inhibiting innovation rather than expanding innovation because innovation is thought to be improved by the disclosure of the ideas.  Therefore, considering the costs associated with granting the inventor a 20 year monopoly on the invention,[11] the loss of potential disclosure presented by the America Invents Act should not be taken lightly.
The American Invents Act eliminates the best mode requirement as a vehicle for infringing parties to invalidate a patent.  As the law stands now, the availability of the best mode defense represents a strong barrier protecting important policy concerns fundamental to our nation’s patent law system.  Eliminating the best mode as a defense sets the system up for potential rampant abuse. Consequently, the change in the law that takes effect in March of next year was probably not the “best” decision.
[1]  Wesley D. Markham, Is the Best Mode the Worst? Dueling Arguments, Empirical Analysis and Recommendations for Reform, 51 IDEA 129, 133 (2011).
[2] Id.
[3]Sherr, Defenses to Patent Infringement Under the America Invents Act, 2011 Emerging Issues 6141 (December 12, 2011).
[4]  Markham, supra note 1, at 161.
[5]  Id. at 1104.
[6]  Id.
[7]  Id.
[8]  Jerry R. Selinger, In Defense of “Best Mode” Preserving the Benefit of the Bargain for the Public, 43 Catholic U. L. Rev. 1071, 1104 (1994).
[9]  Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997).
[10]  See Alan Devlin, The Misunderstood Function of Disclosure in Patent Law,23 Harv. J.L. & Tech. 401, 407 (2010).
[11]  Id.