Best mode

An additional statutory requirement is that of disclosure. A patent must provide the pubHc with a disclosure which is enabling, definite, and shows the best mode for practicing the claimed invention. 

Best Mode. The patent appHcant must disclose the best mode of practicing the invention known to the inventor at the time the appHcation is filed. Concerns over best mode often arise when a patent appHcant seeks patent protection for an invention but, at the same time, desires to keep as a trade secret one aspect of the invention necessary to the production of a commercial product. This action denies the pubHc access to this information and undermines the poHcies of the patent system. This would effectively deprive the pubHc of information on the amount of disclosure made in exchange for the 17-yr patent grant, and hence it invaHdates the patent grant. 

As a result of the need for its disclosure, an inventor must disclose the best mode of practicing the invention that the inventor knows in drafting a patent appHcation. In some instances, the best mode may be the very commercial product developed by the inventor. However, in other instances the best mode may be an article, machine, or process which is economically or commercially impractical. Nonetheless, this embodiment needs to be disclosed in the patent. 

Furthermore, in the USA the best mode of carrying out the invention must be disclosed. Thus, potentially, a patent applicant has to disclose to its competitors what it is doing. 

A patent application must disclose the claimed invention in sufficient detail to allow a person skilled in the art to carry out the invention. This requirement stems from the bargain that the patentee has with the state granting the patent in return for a limited monopoly, the patentee must disclose the invention to the public in his patent, so the pubhc can work the invention when the monopoly expires. In the USA the requirement is even more stringent than in Europe because the applicant must disclose in his patent application the best mode of carrying out the invention known to him as of when the application is filed. 

Worked examples are, where possible, included. If worked examples are not available it may be desirable to give prophetic or dummy examples which, although they have not been worked, describe how to carry out a particular aspect of the invention. The patent apphcation must give a sufficient disclosure of how to carry out the invention without undue burden (the sufficiency or enablemenf requirement). In the USA it is essential to describe the best way of carrying out the invention known to the inventors when the application is filed (the best mode requirement). For inventions using certain biological material (such as host cells, vectors, hybridomas, bacteria and the like) it may be necessary to make a special deposit of the material in order to fulfil the sufficiency requirement. 

A further difference between CSTR batteries and PFRs is that of product distributions with complex reactions. In the simple case, A- B- C for example, a higher yield of intermediate product B is obtained in a PFR than in a single CSTR. It is not possible to generalize the results completely, so that the algebra of each individual reacting system must be worked out to find the best mode. 

The term support in this context refers to die requirements of 35 U.S.C. 112, which requires adequate written description of die claimed invention, enablement, and best mode. Much more will be said about these requirements in Chapter 9, but for now it is necessary only to appreciate that die provisional application is good on die date it is filed to die extent that it provides enough detail so that a person of ordinary skill in the art can make and use die later-claimed invention without having to resort to undue experimentation and that a credible utility for die claimed invention is alleged. The best mode means that die application includes die inventor s best mode of practicing die claimed invention. 

The written description, enablement and best mode requirements all fall under the first paragraph of the... 

Basic Requirements of Patentability Written Description, Enablement, and Best Mode... 

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 clearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention (emphasis added). 

In the section emphasis has been placed on the three key components of written description, enablement, and best mode. Each of these three requirements is separate and distinct, so that is how they will be treated in this chapter. Though it might seem obvious, each of the three sections of the written description requirement applies to the claimed invention only. It is surprisingly easy to get caught up with peripheral aspects of the invention that do not directly involve claimed elements and, as a result, overinterpret the ambit of 112 f 1. Likewise, it is easy to forget that written description is required for all of the elements in a claim and as a result, attempt to make claim amendments during patent prosecution that do not find adequate written description support in the patent specification. Making the claim elements the focus will help to keep one on track with respect to 112 f 1 issues. 

Failure to meet the best mode requirement results in the invalidation for the one or more claims that the inventor s best mode was not adequately provided. The failure to provide the best mode can also result in the invalidation of the entire patent if the best mode was withheld with an intention to deceive (i.e. a finding of inequitable conduct renders the entire patent nonforceable). 

While we have properly focused on the inventor s perception of what the best mode is, the best mode does not have to be part of the applicant s invention per se but can be part of what is known in the art or even provided to the inventor by, for example, a particular commercial supplier. For example, if a claimed process requires a catalyst and the inventors have found that a particular commercial supplier s catalyst is best for practicing the claimed process, then that detail will need to be disclosed in the patent application. However, the potential inconvenience of this latter requirement is significantly tempered by the more fundamental requirement that the best mode applies to the claimed invention only. 

According to the Bayer court, however, we still need to determine whether the failure to provide the inventor s best mode for making the compound materially affected the properties of the claimed compound. As an abstract legal matter, one can at least appreciate the CAFC panel s position because it is conceivable that inventors might not disclose the best mode for making a composition where that best mode positively affected the properties of the claimed composition itself. For example, one might envision a best mode crystallization process as a final synthetic step where that crystallization process yields a particularly preferred crystalline form... 

In Chapter 2 we briefly discussed the possibility of claiming a priority date from an earlier filed patent application provided, among other things, that the earlier filed patent application met the requirements of 112, including providing the best mode of practicing the claimed invention. 

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