Chapter §5.03 Unclear Policy Objectives

• Jurisdiction: United States

§5.03 Unclear Policy Objectives

Unlike that of the enablement requirement, the policy rationale for the best mode requirement has never been completely transparent.¹⁷ The Court of Customs and Patent Appeals (CCPA) explained that "the sole purpose of this [best mode] requirement is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived."¹⁸ This view does not fully explain why such a requirement is necessary in addition to the enablement requirement.

Some courts have posited that the underlying goal of the best mode requirement is that when a patent expires, members of the public should not only be able to make and use at least one embodiment of the invention [the goal of enablement], but moreover, should be put in a commercially competitive position with the holder of the expired patent.¹⁹ Although this goal appears laudable on its face, it is likely more than is required from patent applicants to fulfill the constitutional mandate of "promot[ing] the Progress of . . . useful Arts."²⁰

Even if providing commercially optimal information as of a patent's expiration is not an appropriate policy goal underlying best mode, there is no doubt that the statutory language forcefully compels a complete and thorough disclosure of the invention:

One cannot read the wording of section 112 without appreciating that strong language has been used for the purpose of compelling complete disclosure. There always exists, on the part of some people, a selfish desire to obtain patent protection without making a full disclosure, which the law, in the public interest, must guard against. Hence section 112 calls for description in 'full, clear, concise, and exact terms' and the 'best mode' requirement does not permit an inventor to disclose only what he knows to be his second-best embodiment, retaining the best for himself. ²¹

The best mode requirement thus operates to force inventors to disclose information that would otherwise likely be in their best interest to maintain as trade secrets. This is not a new idea. Noted nineteenth-century treatise author William Robinson viewed the requirement as preventing a fraud on the public:

But one mode of reducing the idea to practical utility must be described, and thus must be the best one known to the inventor, since to withhold, for his own use or that of his licensees, a better form than that which he bestows upon the

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