America Invents Act and the best mode requirement

Intellectual Property News, Fall 2011

"On Sept. 16, 2011, President Obama signed the America Invents Act (AIA), the first major overhaul of the patent system in nearly 60 years.” So begins a recent law review article titled “Patent Reform and Best Mode: A Signal to the Patent Office or a Step Toward Elimination?,” written by Ryan Vacca, assistant professor of law at the University of Akron School of Law. This article will soon be published in volume 75 of the Albany Law Review (2012).

He writes further: “The change to the best mode requirement is found in section 15 of the AIA. This section provides: (a) In General—Section 282 of title 35, United States Code, is amended in the second undesignated paragr​​​aph by striking paragraph (3) and inserting the following: ‘(3) Invalidity of the patent or any claim in suit for failure to comply with (A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable ... .’

“In short, as of Sept. 16, 2011, section 15 eliminated best mode as a basis for asserting invalidity, inequitable conduct, or cancellation of any or all claims in a patent while at the same time leaving the best mode requirement in section 112 untouched. As a result, patent applicants must disclose the best mode to receive a patent, but in the event a patent is obtained despite a failure to comply with section 112’s best mode requirement, no challenge to the patent rights can be made based on this failure.

“The legislative history of the AIA's best mode amendment is relatively sparse, but builds upon the years of unsuccessful attempts at patent reform discussed earlier. The House Judiciary Committee Report indicates that the elimination of the best mode as a defense to patent infringement was decided based on the best mode being unique to the United States, inherently subjective, and often technologically irrelevant. Thus, Congress bought into the arguments made by best mode critics, but compromised and refused to go as far as many requested because Congress also recognized that the required disclosures, including best mode, 'are an important tradeoff that underlies the patent laws: the grant of a limited-term monopoly in exchange for disclosure of the invention'“ (citations omitted).

Professor Ryan Vacca can be reached at (330) 972-7972, or His complete article may be found at Quoted with permission by Bruce H. Wilson, Akron.​




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