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Trade Secrets and the "Best Mode" Requirement -- No. 21

In Trade Secret Blogs Nos. 15 and 19, I asserted briefly but categorically that the "Best Mode" requirement of the Patent Statute is no impediment to the coexistence of patents and trade secrets, because this requirement is a very narrow and subjective one as it applies only at the time of filing, only to the knowledge of the inventor(s) and only to the claimed invention.

This assertion calls for amplification and explanation, especially since the "Best Mode" requirement is such as entrenched bugaboo.

Conventional wisdom holds that, because of the "best mode" requirement, which is embedded in American and many foreign patent laws, trade secret protection cannot coexist with patent protection.  This is a serious misconception.  Tom Arnold, the founder of the former Arnold, White & Dirkey firm in Houston, is in full agreement when he states that it is "flat wrong" to assume, as "many courts and even many patent lawyers seem prone" to do, that "because the patent statute requires a best mode disclosure, patents necessarily disclose or preempt all the trade secrets that are useful in the practice of the invention."

Any contention that trade secrets cannot coexist with patents on a given invention overlooks three simple truths.  The best mode requirement applies (1) only at the time of filing; (2) only to the knowledge of the inventor(s); and (3) only to the claimed invention.  Consequently, the best mode requirement is actually no impediment to the coexistence of patents and trade secrets for almost any invention for the following reasons.

In order to obtain the earliest possible filing or priority date, inventors normally file patent applications very early in the research stage, after a first reduction to practice.  The specification of such an early application typically describes in relatively few pages only rudimentary lab or shop experiments done and samples or prototypes obtained and a mode of carrying out the invention.  Better modes, including the best mode, for commercial manufacture and use remain to be developed later in the development or pilot stage and after the filing of a first application.
    
Besides, manufacturing process details are, even if available at the time of filing, not a part of the statutorily required enablement and best mode disclosure of a patent.  Decisional law leaves no doubt that disclosure of manufacturing details or production specifications is not required, as is clear from such decisions as Christianson v. Colt Industries, Wahl Instruments v. Acvious, Teleflex v. Ficosa North America, and Matsushita v. Cinram International. From these and similar decisions, Professor Chisum concludes, "[a]n inventor is not required to supply 'production specifications'" nor "processes or materials . . . for commercial manufacturing convenience or for accommodating the needs of a particular supplier or customer." And Tom Arnold opines, "Patents do not disclose the engineering detail of any particular embodiment of a product nor the production engineering for its commercial manufacture."

It is also noteworthy that the development of a best mode is often done by others; for example, specialists in process development and pharmaceutical formulation employed by assignees, as was the case in Glaxo v. Novopharm. This occurs without involvement of the inventor to whom knowledge of such a best mode cannot be imputed.  Thus, the touchstone in this regard is the "mode" believed to be the best by the inventor, which is a subjective standard.

Interestingly, according to Professor Chisum, another rationale behind the best mode requirement is that the requirement is intended to allow the public to compete fairly with the patentee following the expiration of the patents. Chisum states that this rationale is not tenable as it ignores the realities of the patent system and the commercial market place because rarely will the disclosure--of the best mode set forth in an application--be of competitive interest when the patent expires.

Lastly, patent claims tend to be narrow for distance from the prior art to satisfy the novelty and unobviousness requirements of Sections 102 and 103 of the U.S. Patent Code.  As stated above, the best mode requirement applies only to the claimed invention, as shown by Christianson v. Colt Industries, Northern Telecom v. Samsung Electronics, Eli Lilly v. Barr Labs and Applied Medical Resources v. US Surgical.

In a chapter entitled "Filing for Patent Protection Without Loss of Trade Secret Protection" in his book on Trade Secret Protection, Gale Peterson emphasizes that "the patent statute only requires a written description of the claimed invention and how to make and use the claimed invention." He advises therefore that, inasmuch as allowed claims on a patentable system cover "usually much less than the entire scope of the system, that the disclosure in the application be limited to that disclosure necessary to 'support' the claims in a [Section] 112 sense, and that every effort be taken to maintain the remainder of the system as a trade secret." Tom Arnold also affirms, "patents often do not disclose important secrets that nevertheless are within the scope of the patents' effective control."

The CFMT v. Yieldup International decision by the Court of Appeals for the Federal Circuit is likewise highly germane.  The court stated, "Enablement does not require an inventor to meet lofty standards for success in the commercial marketplace.  Title 35 does not require that a patent disclosure enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect. . . . [T]his court gauges enablement at the date of the filing, not in light of later developments." Such reasoning applies of course equally well to the best mode requirement.

In Peter Rosenberg's opinion, "[p]atents protect only a very small portion of the total technology involved in the commercial exploitation of an invention. . . .  Considerable expenditure of time, effort, and capital is necessary to transform an [inventive concept] into a marketable product." In this process, he adds, valuable know-how is generated. Even if this know-how is inventive and protectable by patents, it can be maintained as trade secrets, as there is "nothing improper in patenting some inventions and keeping others trade secrets."

It is clear, then, from all the above citations and quotations, that authorities and court decisions amply support my foregoing conclusions.  This demonstrates that the best mode requirement is a very narrow defense at best.  In fact, according to a recent decision, the Court of Appeals for the Federal Circuit has held claims invalid for failure to satisfy the best mode requirement on only seven occasions.

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This page contains a single entry from the blog posted on September 30, 2008 12:45 PM.

The previous post in this blog was Federalizing Trade Secret Law: A Cause Whose Time Has Come -- No. 20.

The next post in this blog is Exemplary Cases Prove The Compatibility of Patents and Trade Secrets -- No. 22.

Many more can be found on the main index page or by looking through the archives.