An inventor's obligation to disclose the best mode of her invention is strong consideration in the U.S. patent bargain, but the courts paradoxically define the scope of that obligation, thus rendering the enforcement of U.S. patents unreasonably unpredictable. If an inventor cannot reasonably foresee the scope of her obligation to disclose invention details, then she is subjected to the costs and risks of either overcompliance or undercompliance with the best mode requirement. The scope of the best mode requirement should either be reliably defined by an en banc ruling of the Court of Appeals for the Federal Circuit, or the requirement should be discarded entirely by legislative action, preferably as a sacrificial bargaining chip during future international patent law harmonization efforts. Until then, however, an inventor should overcomply with the best mode requirement to avoid having her patent claims invalidated, or worse. In light of the disservice that the best mode requirement currently does to patent law, this article advocates a drastic legal change, either to stabilize the scope of the best mode requirement and thus render it fit for the purpose it was intended to serve, or to discard the requirement altogether. In addition, this article provides guidance for inventors in complying with the unpredictable best mode requirement. Section II of this article traces the evolution of the best mode requirement. Section III extracts a plain language definition of best mode from the current statutory and regulatory provisions. Then, the different standards of law regarding the scope of invention disclosure are chronologically culled from the case law in Section IV. Sections V and VI set forth a set of conclusions and recommendations, and, finally, Section VII provides a summary of the key points of this article. The Appendix provides aids for visualizing the author's suggested definition and scope of the best mode requirement.
Steven B. Walmsley,
Best Mode: A Plea to Repair or Sacrifice this Broken Requirement of United States Patent Law,
Mich. Telecomm. & Tech. L. Rev.
Available at: https://repository.law.umich.edu/mttlr/vol9/iss1/4