Academic journal article Albany Law Review

Patent Reform and Best Mode: A Signal to the Patent Office or a Step toward Elimination?

Academic journal article Albany Law Review

Patent Reform and Best Mode: A Signal to the Patent Office or a Step toward Elimination?

Article excerpt

ABSTRACT

On September 16, 2011, President Obama signed the America Invents Act ("AIA") the first major overhaul of the patent system in nearly sixty years. This article analyzes the recent change to patent law's best mode requirement under the AIA. Before the AIA, patent applicants were required, at the time of submitting their application, to disclose the best mode of carrying out the invention as contemplated by the inventor. A failure to disclose the best mode was a basis for a finding of invalidity of the relevant claims or could render the entire patent unenforceable under the doctrine of inequitable conduct. The AIA still requires patent applicants to disclose the best mode but has removed the traditional enforcement mechanisms--declarations of invalidity and unenforceability--as defenses to patent infringement. In this article, I propose and explore several innovative techniques that could be used to add teeth to the seemingly toothless best mode requirement. Ultimately, I reject these proposals as not being workable solutions and suggest that Congress's resolution of the best mode problem is nonsensical and that it should completely eliminate the requirement rather than send mixed signals to the Patent Office and patent practitioners.

ARTICLE CONTENTS

  I. INTRODUCTION

 II. BEST MODE BEFORE THE AIA
     A. Early History
     B. The 1952 Patent Act
     C. Critiques of Best Mode

III. THE AIA's CHANGES TO BEST MODE

 IV. BEST MODE AT THE PTO

  V. EXTINCTION OR INNOVATIVE ENFORCEMENT?
     A. Complete Elimination of the Best Mode
     B. Innovative Enforcement
        1. The Basis--Rule 1.105
        2. Criminal Means
        3. Ethical Means
        4. Limitations

 VI. CONCLUSION

I. INTRODUCTION

The best mode requirement of patent law has been the proverbial redheaded stepchild with respect to disclosures. Its sibling, enablement, is seen as the core component of the bargain between the inventor and the public. (1) Without enablement, we would be thrust back into seventeenth century England, where state-sanctioned monopolies were commonly granted at the expense of the public. (2) But best mode has struggled to find its place. Is it central to the goals of the patent system? Is it uniquely American? Does it benefit the public? If so, is this benefit worth the costs? These questions have plagued best mode for years. With passage of the AIA, (3) Congress has partially answered these lingering questions. But, by definition, when questions are only partially answered additional unanswered questions remain. This article examines the AIA's changes to the best mode, evaluates what impact those changes will have and what problems or questions have been raised as a result, and then sets forth and assesses possible solutions.

Part II reviews the early history of the best mode, its culmination in the 1952 Patent Act, and the critiques made to the 1952 Act's best mode requirement. Part III discusses the AIA's best mode compromise, including the legislative history leading up to the AIA's enactment, and the potential concern resulting from this compromise--a lack of means of enforcement. Part IV builds upon this concern by illustrating how enforcement of the best mode at the Patent and Trademark Office is nonexistent. Part V describes how the AIA's best mode reform could be seen as a Congressional step towards complete elimination of best mode or an opportunity for the United States Patent and Trademark Office ("PTO") to use innovative methods to enforce it. Finally, Part V discusses the limitations of these innovative methods of enforcement and concludes that these methods are unlikely to be effective at encouraging best mode disclosures.

II. BEST MODE BEFORE THE AIA

A. Early History

The origins of best mode stem back to the nation's first patent act--the Patent Act of 1790. (4) Section 2 of the 1790 Act required the patentee to deliver a specification that was sufficiently particular:

   [N]ot only to distinguish the invention or discovery from other
   things before known and used, but also to enable a workman or other
   person skilled in the art or manufacture . … 
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