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By Eric J. Snustad

Is it now possible to get a patent on the broad strokes of an invention while at the same time creating potentially never-ending trade secret protection on the cleverest aspects of the invention? In the opinion of yours truly, the answer is “no,” but this may change.

To obtain a valid U.S. patent, it has traditionally been necessary to include in your patent application a disclosure of the best way you know to practice the invention. This so-called “best mode requirement” reflects the idea that if you are going to seek the legal protection afforded by a patent, then you should not be allowed to leave out of the patent application the best details of the invention.

In 2011, Congress passed sweeping patent law legislation, called the America Invents Act (AIA). The AIA changed many aspects of U.S. patent law, including the consequences of failing to disclose in your patent application the “best mode” you are aware of for practicing the invention. Traditionally, if you failed to disclose the best mode in your patent application, then that could be grounds for invalidating the resulting patent. The AIA changed this; no longer can patents be invalidated for failing to include the best mode. The AIA, however, did not change the basic legal requirement that inventors and patent applicants must disclose the best mode in their patent applications. In effect, the AIA left untouched the best mode requirement, but eliminated the punishment, or at least the main punishment, for failing to comply with the requirement.

Given these changes, inventors may ask whether they can now leave out of future patent applications the most valuable, sensitive details about their inventions. After all, when we include in our patent application the “special sauce” of the invention, our competitors get to see that information when our patent application is later published.

For the time being, this author continues to recommend including the best mode in your patent applications. While there no longer seem to be major “teeth” behind the best mode requirement, these legal changes are new enough that the downsides of not disclosing the best mode may only become clear with time. For example, in the nominal 20-year term of the patents you are filing today, it is possible that Congress will pass more laws, or that the Patent Office will adopt new practices, creating more serious problems for patents or patent applications that do not include the best mode.

It also seems possible that if an inventor or patent applicant intentionally withholds the best invention details from a patent application, then that decision to withhold the best mode (if learned of by a court that has been asked to enforce the resulting patent) may be used to limit the equitable remedies (such as the ability to get an injunction) available to the patent owner.

Moreover, to the extent you leave the best mode out of your patent application, you may be failing to create your own prior art (at least as to the best mode) against a competitor that comes along later and attempts to get its own patent on its subsequent more specific invention of precisely that which was the “best mode” of your earlier, more general invention. While you may have a so-called “prior user rights” defense to a subsequent claim by your competitor that you are infringing its later patent (if you began commercializing your best mode before your competitor filed its patent application), the scope, reliability, and strength of the prior user rights defense also remain to be seen since the broad applicability of this defense was only first implemented in the U.S. by the recent AIA.

For these and other reasons not discussed here, this author continues to recommend that the best mode be disclosed in patent applications. This, however, is an item on which to stay tuned. The best mode requirement has been criticized for years by legal commentators. Moreover, Congress in the time leading up to passage of the AIA considered legislation that would have entirely eliminated the best mode requirement. The remaining best mode requirement may therefore be eliminated by future legislation. Needless to say, it is difficult to predict the likelihood of that happening. In the meantime, however, it seems best to keep including the best mode in your patent applications.


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