Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 107

The U.S. Patent Law, for many years, has required that the ones seeking patent protection disclose the “best mode” of practicing the subject invention in the patent application. This requirement is retained in the AIA, which ensures that their invention that goes into the public domain is the best version of the invention conceived and reduced to practice from the inventor(s), rather than some inferior version.

However, the AIA removes any penalty for failing to disclose the best mode of the invention in a patent application by stating that “the failure to disclose the best mode shall not be a basis on which any claim of a patent may be cancelled or held invalid or otherwise unenforceable…” (35 U.S.C. §282(b)(3)(A)). Despite this, 35 U.S.C. §112(a) of the new AIA Patent Law, in mandating the contents of a patent application specification, states that the applicant “shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” The new law also provides that a patent application filed first in a foreign country and then filed in the United States does not have to disclose the best mode of the invention.

The consensus is that this removal of the defense of the failure to disclose the best mode in a patent application was enacted to accommodate global patent harmonization efforts, since, generally, foreign patent statutes do not have a best mode requirement.

In addition, in the way the AIA has changed this element of the Patent Law, it appears that, even though a patent applicant is required to disclose the best mode of practicing the invention in the patent application, the lack of best mode cannot be raised by third parties in post‐grant reviews of patents newly authorized by the AIA.

Theoretically, a Patent Examiner could still reject a patent application on the grounds of failing to disclose the best mode of the invention. However, since the USPTO rules do not allow a Patent Examiner to obtain information from the applicant through a “discovery” process as used in litigation in the United States, the examiner has practically no way of determining whether or not the inventor has disclosed the best mode.

In my opinion, this is one of the conundrums that may be understood further as time goes by, and as future court decisions consider this point.

In my judgment, best practices dictate that the disclosure of the invention in the patent application must be of the best mode of practicing the invention known to the inventor at the time of the invention disclosure meeting. Since there is a time lag between the first meeting with the patent attorney and the actual completion of the patent application, if the invention has been improved during that time period, the later developments must be described to the patent attorney, so that the latest, best mode of the invention can be included in the patent application upon filing. Also, if the inventors have developed alternative embodiments of the invention during this time period, these should be described so that the patent attorney can determine which of the alternative embodiments should also be described in the patent application. Each and every remote possible embodiment does not need to be described, but the presentation of alternate embodiments helps the lawyer draft the description and claims in the patent application to provide broad enough protection to cover any manifestation of the invention that a potential infringer could later develop.