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Best Mode Disclosure for Patent Applications: an International and Comparative Perspective

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Best Mode Disclosure for Patent Applications: an International and Comparative Perspective Journal of Intellectual Property Rights Vol 16, September 2011, pp 409-417 Best Mode Disclosure for Patent Applications: An International and Comparative Perspective Bingbin Lu† Nanjing University Law School, No 22, Hankou Road, Nanjing, 210 093, China Received 13 June 2011, revised 13 July 2011 The best mode disclosure requirement helps to ensure that the public receives a full and honest disclosure in return for the grant of patent. It has a profound theoretical basis and foundation. The best mode disclosure requirement is an optional obligation under the TRIPS Agreement in its Article 29. Among the most important developed countries that have implemented this disclosure requirement are the US and Japan; however, there are certain differences in their national laws and practices, especially with regard to the legal effect of this requirement. In the US, patent reform is tending towards removing the best mode disclosure from the list of reasons to invalidate a granted patent; although, the requirement will still apply to all patent applications during patent prosecutions. Developing countries are recommended to consider adopting the best mode disclosure requirement in their patent laws. It is proposed that patent applicants be required to disclose the best mode which shall be a substantive condition for patent grant; however, the failure to disclose the best mode may not constitute a reason to invalidate a granted patent. The objective of this article is to study the best mode disclosure requirement from an international and comparative perspective, and suggest how developing countries should implement this disclosure requirement. The article also seeks to answer to two questions: whether a developing country should implement the best mode disclosure requirement, and if so, how to best implement it? Keywords: Patent, best mode, disclosure requirements, TRIPS Agreement Disclosure is one of the key issues in the patent requirement is the first paragraph of Section 112, Title system. To obtain a valid patent, a patent application 35 of the United States Code (the US Patent Act), must meet several requirements. The invention must which requires the inventor to adequately describe the be not only patentable subject matter, useful, novel, three elements in the patent application: (1) a written and nonobvious, but in the patent application, the description of the invention itself; (2) the manner and applicant must provide a specification that sufficiently process of making and using the invention discloses the invention. The last one is commonly (the enablement requirement); and (3) the best mode known as disclosure requirements. Disclosure is the contemplated for carrying out the invention counterpart for patent grant, and is what the applicant (the best mode requirement). brings in exchange for a monopoly whose duration is In order to understand the best mode disclosure limited in time. requirement, the differences between the enablement The best mode disclosure is one of requirements requirement and best mode requirement shall firstly in patent applications that can be found in patent be analysed. These two requirements are ‘separate laws, regulations or guidelines of countries and distinct’ from one another. The enablement including the United States, Japan, China and India. requirement pertains to the sufficiency of the Under this disclosure requirement, an applicant or disclosure to teach one of ordinary skill to implement inventor must, at the time of filing his or her patent the invention; whereas, the best mode pertains to the application, disclose not only the invention and quality of such disclosure and the honesty of patent how to make and use the invention, but also the applicant. The ‘essence of (the enablement best mode contemplated for carrying out the requirement) is that a specification of a patent shall invention. disclose an invention in such a manner as will enable The representative rule of the best mode disclosure one skilled in the art to make and utilize it.’1 In ________ contrast, the ‘sole purpose of (the best mode) Email: [email protected] Published in Articles section of www.manupatra.com 410 J INTELLEC PROP RIGHTS, SEPTEMBER 2011 requirement is to restrain inventors from applying for obtained broad patent protection covering a new patents while at the same time concealing from the process of making a special material, yet maintained public preferred embodiments of their inventions as a trade secret the optimal reaction conditions for which they have in fact conceived.’1 All countries that process. However, the best mode disclosure which implement the best mode requirement are requirement prevents such gaming of the patent similar in requiring the most advantageous or most system by requiring a patent applicant to disclose preferable mode (compared to other simultaneously what the inventor considers to be the best mode of disclosed solutions) to be disclosed in the patent practicing the invention.5 Absent best mode, the patent application. system as a whole would be undermined since such a weakened system would permit the granting of patent The Theoretical Foundations of Best Mode protection for an invention that is at least partly Disclosure protected by trade secret. The inventor would thus be Before inquiring into the best mode disclosure able to have the best of both the patent and trade requirement from an international and comparative secret worlds.6 The most valuable information of the perspective, the theoretical foundation including the invention could be protected by trade secret during public policy behind the best mode disclosure the life of the patent without best mode compliance. requirement needs to be investigated thoroughly. After the patent’s expiration, the inventor would be The contract theory of patents is the principle able to continue to maintain the ‘heart’ of the theory for disclosure requirements. In exchange for invention as a trade secret, assuming that the the right and liberty to exclude, a patent applicant undisclosed best mode continues to retain the must disclose certain aspects of his invention in an attributes of a trade secret.6 Thus, comparatively application for patent. Through disclosure, the patent speaking, enablement is a less-than-stringent system introduces new designs and technologies into requirement. Disclosing any mode of carrying out the the public domain, and thereby increases the public invention evidences compliance with enablement; store of knowledge and information.2 The purpose of even a mode that the inventor knows to be inadequate the statutory disclosure requirements, in general, and in the marketplace. This puts any competitor, seeking the best mode requirement, in particular, is to to enter the market upon expiration of the patent, at a compensate the public for the cost of the monopoly huge competitive disadvantage, and undermines the conferred on a patentee. Disclosure is thus of central quid-pro-quo for the patent grant.6 importance to patents. The requirement of clear and In sum, the best mode disclosure requirement helps complete disclosure is the contribution of the inventor to improve the quality of the patent grant, and helps to for obtaining a monopoly right limited in time. The ensure that the public receives a full and honest best mode requirement is intended to allow the public disclosure in return for the grant of exclusivity. This to compete fairly with the patentee following the rule is supported by profound theoretical foundations. expiration of the patents.3 Under the contract theory of patents, the disclosure of invention is the quid pro Best Mode Disclosure under the TRIPS Agreement quo or consideration for the grant of patent protection. Article 29 of the TRIPS Agreement, a clause that Patent right is considered as a reward for inventors or includes the best mode disclosure requirement, is a applicants for making their inventions available to the substantive rule introduced by the TRIPS Agreement, public instead of keeping them secret.4 which was lacking in the Paris Convention.7 The best mode disclosure reflects the deepest The first paragraph of Article 29 of the TRIPS distinction between patent protection and trade secret Agreement provides that: ‘Members shall require that protection. The tension between patent protection and an applicant for a patent shall disclose the invention in trade secret protection boils down to the best mode a manner sufficiently clear and complete for the requirement. Given the option, a patent applicant invention to be carried out by a person skilled in the would prefer to protect the broad idea of his or her art and may require the applicant to indicate the best invention with a patent, but maintain the best features mode for carrying out the invention known to the as a trade secret. A company could obtain a inventor at the filing date or, where priority is significant competitive advantage if the company claimed, at the priority date of the application.’ This Published in Articles section of www.manupatra.com LU: BEST MODE DISCLOSURE FOR PATENT APPLICATIONS 411 paragraph includes two disclosure requirements: the contemplated for carrying out the invention, however, enablement disclosure and the best mode disclosure the rule specifies that ‘where the national law of the requirement. The enablement disclosure requirement designated State does not require the description of is a compulsory obligation which WTO members the best mode, but is satisfied with the description of must adopt in national patent laws. However, the any mode (whether it is the best contemplated or not), requirement to indicate the best mode for carrying out failure to describe the best mode contemplated shall the invention is optional. It is left to the discretion of have no effect in that state.’ Unlike the Article 29 of the Members to include this requirement as a the TRIPS Agreement, the PCT treaty obligation is mandatory provision in their national laws. limited to international PCT applications. Also, the The optional obligation clause is different from the treaty obligation under the PCT is limited to the authorization clause.
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