Best Mode (Sec. 112(1/a))

Best Mode (Sec. 112(1/a))

  • AIA: Best mode stricken from Secs. 119(e)(1), 120, 282. So best mode no longer a basis for invalidity, unenforceability, or non-entitlement to effective filing date (Sec. 15) {effective for cases filed on or after 09/16/11}. “[T]he failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.” 35 U.S.C. § 282(b)(3)(A).
  • AIA: TIPS:

BASICS: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” 35 U.S.C. § 112(1/a) (and therefore part of Sec. 120’s effective-filing date requirements). There is a two-part test: (1) whether any inventor subjectively possessed a best mode of practicing the claimed invention, and if so (2) whether the Spec. adequately discloses that mode. E.g., Green Edge (Fed. Cir. 09/07/10). “A best mode violation requires intentional concealment.” Ateliers (Fed. Cir. 05/21/13) (2-1; dissent noting conflicting Federal Circuit panel and CCPA precedents). An “inventor” need not have a best mode.

–     Best Mode Analysis: Explore best mode of unnamed possible inventors.

–     Best Mode: “Known ways of performing a known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information.” High Concrete (Fed. Cir. 07/29/04) (rev’g Summ. J. of best mode violation; distinguishing cases where “best mode” discovered by applicants through trial and error); cf. Joy MM Delaware (Fed. Cir. 11/08/12) (non-precedential) (“An inventor does not conceal the best mode of an invention by disclosing only one of many modes for enabling a claim element when all of the other non-disclosed modes are already well-known substitutes in the art. One of ordinary skill in the art would not need to be reminded of those substitutes to practice the best mode of the invention.”)

–     Must Disclose Best Mode Of Claimed Invention, Not Just Its Innovative Aspects: must disclose identity of preferred starting material for claimed process. Ajinomoto (Fed. Cir. 03/08/10).

–     Don’t Need To Disclose Something Artisan Would Have Determined From Implementing Disclosure: “Because harmonization—a process known to skilled artisans—would produce the optimal dew points, the specification need not disclose them to enable skilled artisans to practice the best mode.” Eurand (Fed. Cir. 04/16/12).

–     No Need To Update Best Mode In Non-Provisional If Claims Entitled To Provisional’s Effective Filing Date: where claims are entitled to provisional application’s filing date, no need to disclose best mode developed after the provisional application was filed. Star Sci. (Fed. Cir. 08/26/11) (no analysis).

–     Sec. 120 And Best Mode: Patent was not entitled to foreign priority date because foreign application did not disclose the best mode (a preferred length of a sheath); because the priority date was lost, the patent was anticipated by the inventor’s own article. Go Med. (Fed. Cir. 10/27/06).

–     TIPS: