Bay Area Technology Law Group Examines Immediate Changes to Patent Law

On September 16, 2011, the America Invents Act (AIA) became law. Although a number of provisions of the Act do not have an “effective date” for quite some time, some provisions took immediate effect. The expert patent attorneys of Bay Area Technology Law Group highlight one such provision: the elimination of permitted legal actions based on a failure to meet the requirement that an application filed before the U.S. Patent and Trademark Office include the “best mode contemplated by the inventor of carrying out his invention” [35 U.S.C. §112].

The rationale for the “best mode” requirement stemmed from the recognition that a patent is a contract with the public whereby an inventor discloses his or her invention in exchange for the receipt of a limited monopoly. If the “best mode” contemplated by the inventor of carrying out his or her invention was not recited, the public would be somewhat shortchanged by providing the inventor with the statutorily prescribed monopoly and yet not receiving, in return, the most ideal construction or use of the invention.

“In other words,” explains Malcolm Wittenberg, an intellectual property attorney at Bay Area Technology Law group, “the patent statue required, as a condition for validity, that the ‘best mode’ known to the patent applicant be disclosed.”

Wittenberg notes that as a practical matter, there is no way that an examiner could independently learn whether an applicant disclosed his or her “best mode.” However, in litigation, where an examiner can be deposed under oath and invention records scrutinized, failure to disclose the “best mode contemplated by the inventor of carrying out his invention” could be determined, which provided a basis for challenging the validity of the patent. With AIA, this has all changed.

According to changes to patent law under Section 15 of AIA, it is now provided that “failure to disclose the best mode will not be a basis on which any claim of a patent may be cancelled or held invalid or otherwise unenforceable…” Thus, although the rules requiring the disclosure of the “best mode” remain in place when prosecuting an application before the U.S. Patent and Trademark Office, failure to comply with the “best mode” requirement does not provide a basis to attack the validity of an issued patent.

“Because an examiner would find it virtually impossible to independently determine whether a patent applicant disclosed the ‘best mode’ for carrying out his or her invention, the ‘best mode’ requirement has been effectively stricken from the statute in light of the inability of a defendant to attack patent validity under 35 U.S.C. §282 [presumption of validity] on this basis,” explains Wittenberg.

For more information about changes to the “best mode” requirement under the new patent law or any of Bay Area Technology Law Group’s products or services, visit:

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