Introduction
Beginning from spears and fire to the most complex and advanced technology, man has created, innovated, and invented to survive and gradually develop into what he has become today. Inventions as the brainchild of a man and the fruit of his labor have long been recognized for their significance. Legislators all around the world have implemented laws to protect them by way of granting patents.
If an inventor has to get monopoly rights over his invention, the invention must not only meet the requirements of novelty, utility, and non-obviousness but also it must be sufficiently disclosed with specifications. As Tim O’Reilly once said, “An invention must make sense to the world it finishes in, and not in the world it started”. The inventor must fully disclose his invention in a way that can be understood by the public. An invention for which monopoly has been granted to its owner must not be kept a secret, it must be disclosed to the public. By doing so, the public repository of knowledge and information is enriched thus fostering cumulative innovation. Imagine a world in which the Wright brothers invented airplanes and obtained patents without sufficient disclosure. They proceed to hire engineers and developers for their newly established Wright Brothers Airlines granting them exclusive rights to operate aircrafts under their patent In such a scenario, no other entity would permitted to manufacture, utilize, or sell airplanes using the patented technology. Consequently, those outside would lack the ability to understand the mechanics of the Wright Brothers leaving them no opportunity to explore, improve, or innovate upon the technology. . Science and scientific progress come to a standstill in such a world of undisclosed information. By disclosing the information regarding inventions, society will be able to use it fruitfully, design around, improve, or be inspired by them paving way for new inventions. Thus, it can be said that patent disclosure indirectly acts as a catalyst for future innovations. Furthermore, full disclosure of an invention by the inventor in return for the grant of monopoly is a quid-pro-quo arrangement of the patent system which ensures that inventors use the system in a fair and equitable manner.
Why would someone file a patent application for his or her invention without disclosing the best embodiments of performing it? The main aim of filing a patent application itself is to completely disclose the invention with as many details as possible so that you will have complete monopoly rights over every detail of your invention. The best mode requirement is a safeguard against attempts to obtain patent protection without making a full disclosure as required by the statute.
The best mode requirement has been a significant aspect of patent law, particularly in the United States and India. This requirement ensures that inventors disclose the most effective way of implementing their inventions rather than keeping crucial information as trade secrets while still enjoying patent protection.
Historical Development in the United States
The best mode requirement has deep roots in U.S. patent law, dating back to the Patent Act of 1790. While not explicitly mentioned in early legislation, the foundation was laid through the requirement that inventors “describe clearly, truly, and fully” their inventions. This evolved into what was known as the “whole of the truth” defense, allowing courts to invalidate patents that didn’t disclose complete information about the invention.
The term “mode” first appeared in the Patent Act of 1863, requiring inventors to explain “several modes” of applying their invention’s principle. By 1870, the legislation specifically used the term “best mode,” though it only applied to machines. The landmark case Page v. Ferry[1] was among the first to interpret the Act as requiring disclosure of the best mode.
In 1952, the requirement was codified in Title 35 of the United States Code, expanding its application beyond machines to all patents. Section 112 of Title 35 of the United States Code required that patent specifications describe the invention, provide enabling disclosure, detail the best mode contemplated by the inventor, and distinctly claim the invention.
Purpose and Implementation
According to the Federal Circuit Court, the purpose of the best mode requirement was to ensure that patent applicants play “fair and square” with the patent system, providing adequate disclosure in exchange for exclusive rights. Courts typically invalidated patents for best mode violations in two scenarios:
- Failure to adequately disclose a preferred embodiment of the invention
- Failure to disclose aspects of making or using the claimed invention that materially affected its properties
Courts developed a two-pronged test to determine compliance:
- A subjective inquiry focusing on the inventor’s state of mind at filing
- An objective inquiry examining whether the best mode was adequately disclosed to enable a skilled person to practice it
Post-America Invents Act (AIA) Changes
Despite its long history, the best mode requirement faced increasing criticism. Critics argued it was:
- Time-consuming and expensive to litigate
- Difficult to prove since it relied on the inventor’s subjective state of mind
- Often ineffective, particularly with rapidly advancing technologies
- Unfair to foreign applicants from countries without similar requirements
After years of debate, the AIA of 2011 made a significant change: while maintaining the best mode requirement in Section 112[2], it amended Section 282 to remove failure to comply with best mode as grounds for invalidating or cancelling patent claims.
Best Mode in India
India’s Patent Act of 1970, Section 10(4), requires inventors to “disclose the best method of performing the invention” known to the applicant. Unlike the post-AIA United States approach, India maintains stricter enforcement:
- Patent applications can be refused during examination for insufficient disclosure
- Pre-grant and post-grant oppositions can be filed based on insufficient disclosure
- Patents can be revoked for failing to disclose the best mode
However, Indian courts have shown some flexibility. In FDC v. Sanjeev Khandelwal & Ors[3] Intellectual Property Appellate Board has ruled that disclosing at least one clear way of working the invention satisfies the sufficiency requirement, and that claims need not necessarily represent the best method.
Importance for Developing Countries
For developing countries, implementing an effective best mode requirement can be valuable. Without it, inventors might obtain patent protection while concealing the most effective implementation as a trade secret. The case of U.S. Gypsum Co. v. National Gypsum Co.[4] demonstrates this risk: the company attempted to remove references to a preferred material from their patent application but was penalized for this best mode violation.
When implementing best mode requirements, countries should:
- Make it a substantive condition for patent grants
- Focus on the inventor’s knowledge rather than the applicant’s
- Establish clear legal consequences for non-compliance
Conclusion
The best mode requirement serves as a crucial safeguard against inventors obtaining monopoly protection without making full disclosures. Even though the United States has weakened its enforcement through the AIA, the requirement remains valuable, particularly for developing countries seeking to build their technological capabilities. By ensuring inventors disclose their most effective implementations, the patent system can better fulfil its purpose of increasing public knowledge and spurring cumulative innovation.
By Anina Varghese
[1] Page v. Ferry, 18 F. Cas. 979 (C.C.E.D. Mich. 1857) (No. 10,662)
[2] Section 112 of Title 35 of the United States Code requires that the specification of an application for a U.S. patent shall:
- a) describe the invention, i.e. give at least a general indication of its nature and scope, generally commensurate with the broadest claims
b) contain an enabling disclosure of how to make and how to use the invention,
c) describe “the best mode contemplated by the inventor of carrying out his invention”-although it may do this in the course of and by means of the same words as those used in givingthe enabling disclosure, and
d) particularly point out and distinctly claim what the inventor regards as his invention
[3] (IPAB Order No. 30 of 2014 dates 21st March 2014)
[4] U.S. Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996)
