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Trade Secrets and the Best Mode Requirement -- No. 15

Anent the subject of Patent/Trade Secret complementariness, the best-mode requirement is a big bugaboo, based on the colossal misconception that patents and trade secrets are completely incompatible because of the best-mode requirement. In fact, there is nothing wrong with obtaining patent protection for a patentable invention and maintaining trade secret protection for the volumes of associated or collateral knowledge and know-how which is not contained in the patent specification after disclosing the "best mode," whatever it may be at the time of filing when only embryonic R&D data may be available.

There is another huge misconception about the best-mode requirement and that is that it is unique to U.S. patent law. Most recently, I noted a statement to that effect in the 2008 edition of Patent Law in a Nutshell, authored by none other than CAFC Judge Randall Rader, George Washington University Professor Martin Adelman et al. That did it for me and I dispatched the following remonstration to them:

"Gentlemen,

Recently I leafed through your 2008 edition of Patent Law in a Nutshell. It's a gem of a book. Congratulations! In doing so, I paid some attention to the "Best Mode" chapter, as I believe that the best mode requirement is no impediment to relying simultaneously on trade secret as well a patent protection for almost any invention, i.e. trade secrets protection for the tons of collateral knowledge and know-how which is not contained in the specification after disclosing the best mode, whatever it may be at the time of filing when most often only embryonic R&D data are available. See my piece on "The Best Mode Requirement: What is Fact and What is Fiction," Germeshausen Center Newsletter, Winter/Spring 2004, p.13-15 (www.piercelaw.edu/germeshausen/news.php).

I couldn't agree more with your conclusion and recommendation that the best mode requirement is a "misfit" and "unnecessary vestige" and should therefore be scrapped and I commend you for stating it so forcefully.

Just a couple of queries. You state on p.216 that "the United States is the only country with a best mode requirement." Such a statement appears also on p.497 of your Cases & Materials on Patent Law, Second Edition.

I've seen or heard such statements often. Everybody says it. For example, Kevin McGough states that "(o)ther nations don't have this requirement." (IP Law & Business, June 2004, p.34). Even Donald Chisum says it in his "Best Mode Concealment..." article p.279 of "Computer & High Technology Law Journal," Vol. 13, 1997.

I did so myself. In my article on the best mode requirement, referenced above, I too allowed as how it is "unique to U.S. patent law." However, a Brazilian alumnus of mine, Joao Marcos Silveira, promptly corrected me upon reading my article by quoting Art. 24 of the Brazilian Industrial Property Law: "The specification shall clearly and sufficiently describe the subject matter, in a way as to enable a person skilled in the art to which it pertains to carry it out, and shall set forth, when applicable, the best mode of execution."

This raised the following question for me: If Brazil, what about other countries? So I posed this question to Dr. Konrad Becker in Basel, Switzerland (former Ciba-Geigy Patent Department Director, now Pierce Law Adjunct Professor) and this is what he reported back:

"Up to now, I also had the (wrong) impression that the 'best mode requirement' is unique to US patent law. I have made a quick search for 'best mode' (or rather 'best') which allows to find 'best method,' 'best manner' and the like) in the WIPO collection of laws for electronic access (www.wipo.int/clea/en) and found the following information: 'Best mode' requirements can be found in Brazil and China, but also in the Andean Pact Decree 486 and the corresponding national laws, and in the laws of Mexico, Panama, Nicaragua, Belize, Argentina, New Zealand, Australia, India, South Africa and Kenya."

So there you have it! The requirement is not at all uncommon abroad.

Incidentally, South Africa amended their Patents Act in 2002 and removed the best mode requirement by deleting the phrase "disclose the best method of performing the invention known to the applicant at the time when the specification is lodged at the patent office" and by adding to the written description requirement the phrase "in order to enable the invention to be performed by a person skilled in the art of such invention." In other words, enablement is good enough, as you also pointed out.

Forgive me for also questioning your statement on p.212 "...continuing applications -- including continuations, divisionals, and continuations-in-part -- that claim priority to an earlier application do not require an update of the best mode disclosure." That certainly is true for continuations and divisionals but is it also true for CIP's? I don't think so and my colleague Professor Tom Field agrees with me. Already in 1977 when I was Chief IP Counsel at Ciba-Geigy I stated in Patent Bulletin No. 6 that "...R&D and Patent staffs will have to continue to pay special attention to the best mode requirement at the time of filing new as well as CIP applications." So my firm belief has always been that if you file a continuation-in-part to add and cover new matter, for which you don't get the parent filing date, you would also have to include any new best mode that was developed after the parent filing date. How can it be otherwise?

The Transco decision (Transco Products v. Performance Contracting, 32 U.S. P.Q. 2d 1077, (Fed. Cir. 1994)), with its extensive discussion of the difference in terms of new matter and effective filing date between continuation and divisionals, on the one hand, and CIP's on the other hand, merely holds that a best mode disclosure need not be updated when filing a continuing application that contains no new matter. It does not hold and is not susceptible to an interpretation that a CIP application containing new matter can exclude an expanded or a better mode when developed after filing of a parent application."

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This page contains a single entry from the blog posted on February 15, 2008 2:43 PM.

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