{"id":812,"date":"2012-06-30T21:46:04","date_gmt":"2012-06-30T21:46:04","guid":{"rendered":"http:\/\/ncjolt.org\/\/?p=812"},"modified":"2020-06-04T20:54:08","modified_gmt":"2020-06-04T20:54:08","slug":"in-depth-look-is-altering-the-best-mode-requirement-the-best-decision","status":"publish","type":"post","link":"https:\/\/journals.law.unc.edu\/ncjolt\/blogs\/in-depth-look-is-altering-the-best-mode-requirement-the-best-decision\/","title":{"rendered":"In-Depth Look: Is Altering the Best Mode Requirement the \u201cBest\u201d Decision?"},"content":{"rendered":"
Monday, April 2nd 2012 by\u00a0Aaron K. Reinhardt<\/strong><\/div>\n
\nIn 2011, President Obama signed the Leahy-Smith America Invents Act into law.\u00a0 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.\u00a0 While this change has certainly receives the most attention, it might not have the greatest impact.\u00a0 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.\u00a0 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.\u00a0 This potentially limits the amount of disclosure received by the public, an essential element of the bargain underlying the patent system.\u00a0<\/em>
\n 
\nOn September 16, 2011, President Obama signed in to law the first major reform to the American patent system in over 60 years\u2014the\u00a0Leahy-Smith America Invents Act<\/a>.\u00a0 Many lawmakers have argued that America\u2019s outdated patent law system has become a barrier to innovation, and thus reform was needed to spark innovation across the country in order to create new\u00a0high tech jobs<\/a>.\u00a0 The most drastic reform involves the infamous switch from a first-to-invent-system to a system that rewards the\u00a0first-inventor-to-file<\/a>. The key concept of a\u00a0first-to-invent system<\/a>\u00a0is 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.\u00a0 Under the\u00a0America Invents Act<\/a>\u00a0this 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.\u00a0 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\u00a020 times each year<\/a>.\u00a0 However, the\u00a0America Invents Act<\/a>contains many other important reforms\u2014including the elimination of the best mode requirement as a defense to patent infringement.
\nThe\u00a0best mode<\/a>\u00a0essentially represents the inventor\u2019s optimized conception of the invention or, more specifically, the inventor\u2019s \u201cpreferred embodiment\u201d for practicing the invention.\u00a0 The\u00a0best mode<\/a>requirement represents one part of the\u00a0\u201cbargain\u201d<\/a>\u00a0underlying American patent law\u2014where 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.\u00a0 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.
\nEliminating the best mode requirement as a defense will certainly have some positive impacts on patent litigation.\u00a0 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]\u00a0\u00a0 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.
\nAs 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.\u00a0 In fact, the USPTO openly admits that they cannot effectively police the best mode requirement during the application process.[4]\u00a0 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.\u00a0 Moreover, this determination is probably best made by competitors in the field\u2014potential infringers\u2014rather than the USPTO which must observe many different industries.\u00a0 Many may argue that there are mechanisms in place to deter concealment of the best mode for using the invention.[5]\u00a0 One such mechanism being inequitable conduct which prohibits and inventor from making a material misrepresentation during the examination process.[6]\u00a0 However, because inequitable conduct requires an \u201covert\u201d misrepresentation rather than \u201cconcealment,\u201d the doctrine does not suit policing the disclosure of the best mode requirement.[7]
\nWithout 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.\u00a0 This is especially true as \u201c[i]nventors realistically will not disclose more that they are absolutely required to divulge.\u201d[8]\u00a0 Furthermore, there is now a potential for inventors, especially parties with a high degree of legal sophistication, to obtain\u00a0dual protection<\/a>\u00a0for their inventions\u2014one in patent and one in trade secret.\u00a0 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.\u00a0 The inventor will then use the best mode of the invention and conceal this use protecting it as a trade secret.\u00a0 In the event that another inventor independently discovers this preferred mode the first inventor will initiate suit against the second inventor under the \u201cdoctrine of equivalents,\u201d[9] and thus this lax in protection from abuse awards the inventor dual protection.\u00a0 However, the fact that the public may often not receive the inventor\u2019s best mode is the probably the most troubling potential impact.
\nThe 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]\u00a0 Eliminating the best mode requirement as a defense potentially limits the disclosure given to the public.\u00a0 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.\u00a0 This has the effect of inhibiting innovation rather than expanding innovation because innovation is thought to be improved by the disclosure of the ideas.\u00a0 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.
\nThe American Invents Act eliminates the best mode requirement as a vehicle for infringing parties to invalidate a patent.\u00a0 As the law stands now, the availability of the best mode defense represents a strong barrier protecting important policy concerns fundamental to our nation\u2019s patent law system.\u00a0 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 \u201cbest\u201d decision.
\n[1]\u00a0 Wesley D. Markham,\u00a0Is the Best Mode the Worst? Dueling Arguments, Empirical Analysis and Recommendations for Reform<\/em>, 51 IDEA 129, 133 (2011).
\n[2]\u00a0Id.<\/em>
\n[3]Sherr,\u00a0Defenses to Patent Infringement Under the America Invents Act<\/em>, 2011 Emerging Issues 6141 (December 12, 2011).
\n[4]\u00a0 Markham,\u00a0supra<\/em>\u00a0note 1, at 161.
\n[5]\u00a0\u00a0Id.<\/em>\u00a0at 1104.
\n[6]\u00a0\u00a0Id<\/em>.
\n[7]\u00a0\u00a0Id<\/em>.
\n[8]\u00a0 Jerry R. Selinger,\u00a0In Defense of \u201cBest Mode\u201d Preserving the Benefit of the Bargain for the Public<\/em>, 43 Catholic U. L. Rev. 1071, 1104 (1994).
\n[9]\u00a0 Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997).
\n[10]\u00a0\u00a0See\u00a0<\/em>Alan Devlin, The Misunderstood Function of Disclosure in Patent Law,23 Harv. J.L. & Tech. 401, 407 (2010).
\n[11]\u00a0\u00a0Id.\u00a0<\/em>\n<\/div>\n","protected":false},"excerpt":{"rendered":"

Monday, April 2nd 2012 by\u00a0Aaron K. Reinhardt In 2011, President Obama signed the Leahy-Smith America Invents Act into law.\u00a0 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.\u00a0 While this change has certainly receives the most attention, it might not have the greatest …<\/a><\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":[],"categories":[51],"tags":[],"_links":{"self":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/812"}],"collection":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/comments?post=812"}],"version-history":[{"count":1,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/812\/revisions"}],"predecessor-version":[{"id":7712,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/812\/revisions\/7712"}],"wp:attachment":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/media?parent=812"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/categories?post=812"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/tags?post=812"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}