By Jason Rantanen
Despite (or more likely because of) the effective demise of the requirement that patent applicants disclose the invention's best mode at the time of filing the application, several academic commentaries on the subject have appeared recently, including two that I co-authored. Below I summarize our most recent work along with two other notable recent articles on best mode.
- In The Pseudo-Elimination of Best Mode: Worst Possible Choice?, a short essay recently published in the UCLA Law Review Discourse, we argue that by equivocating on the best mode requirement - eliminating it as an argument against validity during an infringement action while technically retaining it in section 112 - Congress may have not only failed to achieve the goal of leveling the playing field between U.S. and foreign applicants, but may have tilted it from uneven in one direct, if it ever was uneven, to uneven in the other. The article can be downloaded here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2103278. Our previous article, In Memoriam Best Mode is discussed here.
- In Patent Reform and Best Mode: A Signal to the Patent Office or a Step Toward Elimination?, Ryan Vacca provides a detailed history of the best mode requirement up through the America Invents Act, before examining whether the Patent and Trademark office has the ability to enforce the requirement itself. Professor Vacca concludes that the PTO's methods are unlikely to be effective, and recommends that "if Congress believes it made the right decision in the AIA concerning best mode, then Congress should simply bite the bullet and formally eliminate best mode as a requirement for patentability." The article can be downloaded here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1957768
- In Best Mode Trade Secrets, Brian Love and Christopher Seaman conclude that it may become routine post-AIA for patentees to concurrently assert both patent rights and trade secret rights in certain types of cases. The authors identify undesirable consequences of this change, and suggest an approach courts could consider in order to limit dual claims of trade secret and patent protection. The article can be downloaded here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2056115