Uncertainty Surrounds The Best Mode Requirement In The Wake Of The America Invents Act

The Leahy Smith America Invents Act ("AIA") eliminated the so-called "best mode defense" as a means of invalidating the claims of U.S. patents. Notably however, the AIA did not eliminate the statutory requirement that applicants disclose the best mode of practicing their inventions in patent applications. Thus, in the wake of the AIA, the best mode requirement remains, but the ability to enforce that requirement has been, for all practical purposes, eliminated.

The Best Mode Requirement Before and After the America Invents Act

According to 35 U.S.C. § 112, a patent applicant must "set forth the best mode contemplated by the inventor of carrying out his [or her] invention." In other words, if there are alternative ways of practicing the invention, the inventor must lay out which way works best. In In re Gay, 309 F.2d 769 (CCPA 1962), the United States Court of Customs and Patent Appeals stated that the best mode requirement was designed to prevent an inventor from withholding information that created a competitive advantage while simultaneously securing patent rights that encompass such information.

Prior to the AIA on September 16, 2011, accused infringers were able to challenge the validity of patent claims based on the patentee's failure to comply with the best mode requirement (a challenge which is referred to as a best mode defense). For example, in Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524 (Fed. Cir. 1987) a patentee had developed a new kind of laser and claimed heat conducting cups affixed to a ceramic laser discharge tube. While there were many successful methods and compounds capable of achieving the necessary bond between the cups and the tube, one particular method was far superior to the others. The patentee failed to adequately disclose the preferred method of affixing the cups. In invalidating the patent, the court held that because the method was "necessary to the enjoyment of the invention," the patentee's failure to disclose the preferred method violated section 112.

The AIA has since eliminated the ability to invalidate a claim of a patent based on the failure of the patentee to disclose the best mode. In other words, an accused infringer can no longer assert that a claim is invalid on such grounds. 35 U.S.C. § 282 states that "any requirement of section 112" shall be a defense in "any action involving the validity or infringement of a patent." Section 15 of the AIA, however, amended 35 U.S.C. § 282 creating an...