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In the commotion over how the America Invents Act replaces the uniquely American “first-to-invent” patent system with a “first-to-file” approach, it’s easy to forget that the patent reform bill also guts another longstanding principle of U.S. patent law: the requirement that patent applicants disclose the “best mode” of practice for their invention. Lawyers say the recent change to the requirement creates new potential problems for their clients and casts a cloud of uncertainty over patent applications. In creating the best mode requirement in the nineteenth century, Congress struck a bargain with inventors: We’ll grant you a limited monopoly in the form of patent protection, and in exchange you divulge how your invention works so that scientific community benefits in the long run. But, over time some patent lawyers came to see the best mode requirement as counterproductive—other provisions of the patent act already encourage full disclosure, they argued, and litigating the question of what information an inventor knew and withheld requires a lengthy and rarely successful discovery process. In response, as part of crafting its sweeping patent reforms, Congress considered eliminating the provision altogether. But instead lawmakers struck an unusual compromise: the America Invents Act kept best mode on the books, but made it unenforceable in court by eliminating it as a defense to patent infringement. That approach has left many patent lawyers scratching their heads. As Joseph Hosteny, an IP lawyer at Niro, Haller & Niro in Chicago, puts it: “Why have the requirement at all, if there’s no remedy?” “They’ve turned the best mode requirement into an honor system,” says Matthew Dowd, a patent litigator at Wiley Rein. And honor systems, understandably, don’t inspire much confidence among litigators like Dowd. “It certainly raises the possibility that some applicants may experiment and see if they can not disclose their best mode and get away with it,” he says. “The perception in the patent community is that by eliminating it as a defense, you have really eliminated it as a practical matter,” says Nicholas Groombridge, a partner at Paul, Weiss, Rifkind, Wharton & Garrison. “If the courts stop talking about best mode, over time, it dwindles away to nothing.” This unusual state of the law “creates some tension between in-house attorneys and their clients,” says Tun-Jen Chiang, a professor at George Mason University School of Law. On the one hand, the best mode requirement remains part of patent law, so prosecutors are ethically required to tell their clients make complete disclosures. But, on the other hand, there will be some pushback from clients who want to limit the scope of their disclosure in order to maintain a competitive advantage over rivals, he says. How this tension between patent prosecutors and their clients plays out remains to be seen, Chiang says, but the possibility of ethical violations is real. “I like to think that all lawyers will comply with that ethical requirement even though they are unlikely to be punished, but I don’t think that will be universally done,” he says. Technically speaking, the Office of Enrollment and Discipline at the U.S. Patent and Trademark Office can censure lawyers for failure to disclose. “But this theoretical enforcement mechanism isn’t likely to be implemented in practice,” Chiang says. “It’s very hard for the PTO to determine that an applicant subjectively knew the best mode and isn’t telling them.” Patent lawyers may also be kept honest in their best mode disclosures by related requirements in the Patent Act, says Jake Holdreith, a partner at Robins, Kaplan, Miller, & Ciresi. He points out that Section 112 of the act requires a “written description of the invention. . . in such full, clear, and concise, and exact terms as to enable any person skilled in the art to which it pertains.” “The Federal Circuit has been more willing to narrow patents on written description and enablement in recent years,” says Holdreith. “You could try to hold back some valuable modes as trade secrets, but you run the risk then of having either an enablement or written description violation.” While Congress technically has the final say on legislation, one shouldn’t underestimate the ability of the courts to breathe new life into the best mode doctrine, says Holdreith. “I think it’s an open question if the courts are going to widen some cracks, notwithstanding the patent reform act,” he says. “It’s going to be interesting to watch the courts grapple with the inevitable arguments that you can’t have a situation where someone ignores a statutory requirement and there are no consequences.” See also: “What Effects Will the America Invents Act Have on U.S. Patent Law?,” CorpCounsel, September 2011.

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