Patent reform and best mode: a signal to the Patent Office or a step toward elimination?

• Author: Vacca, Ryan

ABSTRACT

On September 16, 2011, President Obama signed the America Invents Act ("AIA") the first major overhaul of the patent system in nearly sixty years. This article analyzes the recent change to patent law's best mode requirement under the AIA. Before the AIA, patent applicants were required, at the time of submitting their application, to disclose the best mode of carrying out the invention as contemplated by the inventor. A failure to disclose the best mode was a basis for a finding of invalidity of the relevant claims or could render the entire patent unenforceable under the doctrine of inequitable conduct. The AIA still requires patent applicants to disclose the best mode but has removed the traditional enforcement mechanisms--declarations of invalidity and unenforceability--as defenses to patent infringement. In this article, I propose and explore several innovative techniques that could be used to add teeth to the seemingly toothless best mode requirement. Ultimately, I reject these proposals as not being workable solutions and suggest that Congress's resolution of the best mode problem is nonsensical and that it should completely eliminate the requirement rather than send mixed signals to the Patent Office and patent practitioners.

ARTICLE CONTENTS I. INTRODUCTION II. BEST MODE BEFORE THE AIA A. Early History B. The 1952 Patent Act C. Critiques of Best Mode III. THE AIA's CHANGES TO BEST MODE IV. BEST MODE AT THE PTO V. EXTINCTION OR INNOVATIVE ENFORCEMENT? A. Complete Elimination of the Best Mode B. Innovative Enforcement 1. The Basis--Rule 1.105 2. Criminal Means 3. Ethical Means 4. Limitations VI. CONCLUSION I. INTRODUCTION

The best mode requirement of patent law has been the proverbial redheaded stepchild with respect to disclosures. Its sibling, enablement, is seen as the core component of the bargain between the inventor and the public. (1) Without enablement, we would be thrust back into seventeenth century England, where state-sanctioned monopolies were commonly granted at the expense of the public. (2) But best mode has struggled to find its place. Is it central to the goals of the patent system? Is it uniquely American? Does it benefit the public? If so, is this benefit worth the costs? These questions have plagued best mode for years. With passage of the AIA, (3) Congress has partially answered these lingering questions. But, by definition, when questions are only partially answered additional unanswered questions remain. This article examines the AIA's changes to the best mode, evaluates what impact those changes will have and what problems or questions have been raised as a result, and then sets forth and assesses possible solutions.

Part II reviews the early history of the best mode, its culmination in the 1952 Patent Act, and the critiques made to the 1952 Act's best mode requirement. Part III discusses the AIA's best mode compromise, including the legislative history leading up to the AIA's enactment, and the potential concern resulting from this compromise--a lack of means of enforcement. Part IV builds upon this concern by illustrating how enforcement of the best mode at the Patent and Trademark Office is nonexistent. Part V describes how the AIA's best mode reform could be seen as a Congressional step towards complete elimination of best mode or an opportunity for the United States Patent and Trademark Office ("PTO") to use innovative methods to enforce it. Finally, Part V discusses the limitations of these innovative methods of enforcement and concludes that these methods are unlikely to be effective at encouraging best mode disclosures.

2. BEST MODE BEFORE THE AIA

   1. Early History

      The origins of best mode stem back to the nation's first patent act--the Patent Act of 1790. (4) Section 2 of the 1790 Act required the patentee to deliver a specification that was sufficiently particular:

      [N]ot only to distinguish the invention or discovery from other things before known and used, but also to enable a workman or other person skilled in the art or manufacture ... to make, construct, or use the same, to the end that the public may have the full benefit thereof, after the expiration of the patent term. (5) Similarly, section 6 of the 1790 Act contained the "whole of the truth" defense. (6) This defense permitted an alleged infringer to prevail in the event the patentee's specifications either did not contain all of the information about the invention or contained more information than "necessary to produce the effect described." (7)

      Furthermore, this defense required either that the concealment or surplus information actually mislead the public so the described effect could not be produced by the means specified or that the patentee intended this to be so. (8) Read together, these provisions of the 1790 Act imposed a requirement that patentees come forward with all of the relevant detail about their inventions and conceal nothing from the public, which would lead to full enjoyment of their inventions after the patents expired.

      Three years later, Congress repealed the 1790 Act and replaced it with the Patent Act of 1793. (9) The 1793 Act required patentees to set forth a written description of their inventions "in such full, clear and exact terms, as to distinguish the same from all other things before known, and to enable any person skilled in the art ... to make, compound, and use the same." (10) This change continued to increase the chasm between enablement and what would become best mode. Importantly, the 1793 Act also mandated that "in the case of any machine, [the patentee] shall fully explain the principle, and the several modes in which he has contemplated the application of that principle or character, by which it may be distinguished from other inventions...." (11)

      The 1793 Act also modified the "whole of the truth" defense. (12) Section 6 of the 1793 Act permitted an alleged infringer to assert the "whole of the truth" defense and, if successful, would require the court to declare the patent void. (13) To succeed, the alleged infringer only needed to prove that the specification did "not contain the whole truth relative to [the patentee's] discovery, or that it contain[ed] more than [was] necessary to produce the described effect, which concealment or addition shall fully appear to have been made, for the purpose of deceiving the public." (14) The 1793 Act removed the burden on the alleged infringer to show that the described effect could not be achieved through the specified means. (15) Thus, the focus on the "whole of the truth" defense was now squarely focused on the patentee's intent to mislead the public. (16)

      The Patent Act of 1836 (17) largely left the enablement requirement unchanged, but it did modify the "whole of the truth" defense to remove the consequence that the patent be declared void upon a successful assertion of the defense. (18) One of the first cases to interpret the 1836 Act as calling for a best mode is Page v. Ferry. (19) In Page, the alleged infringer asserted that the patentee had withheld a description of the best mode of effectuating the patented machine. (20) The court stated that "[t]he patentee is bound to disclose in his specifications the best method of working his machine known to him at the time of his application. An infringement will not have taken place, unless the invention can be practiced completely by following the specifications." (21) The court in Page continued on to explain that "[t]he specification is intended to teach the public the improvement patented; it must fully disclose the secret; must give the best mode known to the inventor, and contain nothing defective, or that would mislead artists of competent skill in the particular manufacture." (22) The court's discussion of the best mode was distinct from its earlier discussion regarding enablement. (23) The best mode requirement had now developed a life of its own, although not yet codified in the Patent Act. (24)

      Although recognized in Page v. Ferry, the Patent Act of 1870 (25) was the first time the phrase "best mode" was used in patent legislation. (26) In particular, section 26 of the 1870 Act required the applicant, in the case of a patent for a machine, to "explain the principle hereof, and the best mode in which he has contemplated applying that principle so as to distinguish it from other inventions." (27) Of course, the main restriction of this best mode requirement was that it only applied to patent applications regarding machines. (28) Interestingly, the 1870 Act preserved the "whole of the truth" defense, which had served as the basis for a separate best mode requirement until 1870. (29)

   2. The 1952 Patent Act

      In 1952, Congress again amended the Patent Act (30) and codified best mode in section 112. The relevant portion of section 112 states:

      The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. (31) Importantly, best mode was now required for all inventions, not just machines. (32) Also codified was that failure of the inventor to comply with any of the requirements of section 112, including best mode, would be a basis for invalidity. (33) Missing from the 1952 Act was the "whole of the truth" defense. (34)

      Initially, courts tended to analyze enablement and best mode together rather than consider them as distinct requirements. (35) However, the Court of Customs and Patent Appeals CCCPA") soon clarified that the two requirements were different. In In re Gay, (36) the CCPA explained the two requirements as follows:

      The essence of [the enablement requirement] is that a specification shall disclose an invention in...