Best Mode Trade Secrets

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TABLE OF CONTENTS  INTRODUCTION I. THE TRADE SECRET-PATENT DICHOTOMY AND  BEST MODE BEFORE AIA II. BEST MODE IN THE AIA III. CONCURRENT PATENT AND TRADE SECRET  RIGHTS AFTER THE AIA   A. Could Concurrent Protection Become    Common?   B. The Costs and Benefits of Concurrent    Protection   C. A Potential Response to Best Mode    Trade Secret Claims 

Introduction

Traditionally, trade secrecy and patent rights have been considered mutually exclusive. (1) Trade secret rights are premised on secrecy. Without it, they evaporate. (2) Patent rights, on the other hand, require public disclosure. (3) Absent a sufficiently detailed description of the invention, patents are invalid. (4)

However, with the passage of the Leahy-Smith America Invents Act ("AIA") (5) last fall, this once black-and-white distinction may melt into something a little more gray. Buried amidst myriad tweaks to the Patent Act is one that has the potential to substantially change the boundary between patent and trade secret protection. For the first time since 1952, and as a practical matter since 1870, an inventor's failure to disclose in her patent the preferred method for carrying out the invention--the so-called "best mode"--will no longer invalidate her patent rights or otherwise render them unenforceable. (6) This reform lowers patent applicants' disclosure incentives and may usher in a new era of patent practice in which inventors attempt to secure both twenty-year patent terms and possibly indefinite trade secret protection for their inventions--an outcome that Congress may not have considered before passing the law. (7) Patent owners, applicants, attorneys, and courts will soon have to navigate the implications of this important change. (8)

In this brief Essay, we explain why it may become routine after patent reform for patentees to attempt to assert both patent rights and trade secret rights for preferred embodiments of their invention in certain types of cases. We also consider potentially undesirable ramifications of this change and suggest one approach courts may use to limit claims of concurrent trade secret and patent protection when equity demands.

I. THE TRADE SECRET-PATENT DICHOTOMY AND BEST MODE BEFORE AIA

Patentees have long been obligated to disclose in their patents enough information to teach others skilled in the relevant technological field how to use the invention once their patent rights expire. This requirement, called enablement, is "part of the quid pro quo of the patent bargain"--disclosure in exchange for a limited monopoly. (9) Enablement, however, only serves as a floor for disclosure (10)--it requires a patentee to provide enough information "for a person skilled in the art to make and use the invention without undue experimentation" and nothing more. (11)

Best mode, (12) which is "'separate and distinct from enablement,'" (13) helps fill the gap between enablement's minimum disclosure and the inventor's own knowledge about her preferred implementation of the invention. Its purpose "is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of the inventions they have in fact conceived." (14) Best mode requires a patent applicant "'to disclose the best mode contemplated by him, as of the time he executes the application, of carrying out the invention.'" (15) Unlike enablement, then, best mode has both subjective and objective components. The first part, which is subjective, inquires "whether the inventor considered a particular mode of practicing the invention to be superior to all other modes at the time of filing" the application. (16) If so, the inventor must satisfy the objective prong, which requires that she "adequately disclose[] the mode ... considered to be superior." (17)

In addition to teaching future generations how to make and use the patented invention (in theory, anyway (18)), patent law's disclosure requirements also ensure that the invention eventually enters the public domain where it can be used by all for free. …