Stanford Law Review Online: In Memoriam Best Mode
The Stanford Law Review Online has just published an Essay by Lee Petherbridge and Jason Rantanen entitled In Memoriam Best Mode. Professors Petherbridge and Rantanen discuss an overlooked element of the Leahy-Smith America Invents Act—the de facto elimination of the requirement that inventors include a description of the “best mode” of practicing their inventions in patent applications:
On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act. It embodies the most substantial legislative overhaul of patent law and practice in more than half a century. Commentators have begun the sizable task of unearthing and calling attention to the many effects the Act may have on the American and international innovation communities. Debates have sprung up over the consequences to inventors small and large, and commentators have obsessed over the Act’s so-called “first-to-file” and “post-grant review” provisions. Lost in the frenzy to understand the consequences of the new Act has been the demise of patent law’s “best mode” requirement.
The purpose of this short essay is to draw attention to a benefit the best mode requirement provides—or perhaps “provided” would be a better word—to the patent system that has not been the subject of previous discussion. The benefit we describe directly challenges the conventional attitude that best mode is divorced from the realities of the patent system and the commercial marketplace. Our analysis suggests that patent reformers may have been much too quick to dismiss best mode as a largely irrelevant, and mostly problematic, doctrine.
Even while best mode can produce patent disclosures that have broader prior art effect, it simultaneously can cooperate with the doctrines of claim construction and written description to produce patents with claims that may be construed as having a narrower scope. Detailed descriptions of especially effective embodiments of an invention can have the effect of introducing elements that courts often find, either through the application of claim construction or written description doctrines, to be essential elements of an invention. Competitors that do not employ such essential elements are not infringers. Thus, best mode can further help establish and maintain the public domain by limiting the amount of information restricted by patents, thereby increasing the distance between bubbles of patent-restricted information.