Thanks for the comment. I hadn’t actually looked at the 2 patents, but used the Federal Circuit description of them. What you mention about each having a “BEST MODE FOR CARRYING OUT THE INVENTION” says these were written using an international/PCT format which, in my opinion, is very dangerous to use in the U.S. because it may imply something that wasn’t intended, but will nonetheless be treated as an “admission” in the U.S. courts (including the Federal Circuit).

Step back is also correct that “best mode” is directly related to what is claimed, and the claimed method was for producing lysine using genetically altered E. coli strain. That put the omitted but preferred host strains squarely within the “best mode” target zone. I’m also not so sure that Lourie’s basis for distinguishing the Bayer case is completely correct as “best mode” also relates to the preferred embodiment for “making and using” the claimed invention (this comes out of the 1st paragraph of 35 USC 112).

The problem I see with the ruling in Ajinomoto is why were these “preferred” host strains omitted. If Ajinomoto omitted these host strains because they didn’t want to disclose them but wanted to keep them as a trade secret, I’ve got very little sympathy for them (even though Ajinomoto is a Japanese company, they’re still pretty savvy about U.S. patent law or should be); that offends the fundamental concept of quid pro quo in U.S. patent law. But if these host strains were omitted innocently and out of ignorance, that would be a different story to me (as long as there is at least one enabling embodiment), and is why the “best mode” requirement, as currently interpreted, has problems. (Others have also commented about the confusing and inconsistent recent application of the “best mode” requirement by the Federal Circuit.) I could also make a similar observation about “inequitable conduct” which should only apply to deliberate efforts to mislead during patent prosecution (not benign neglect which is all too often the basis for an IC allegation). What is ironic is the so-called “patent law reform” keeps the “best mode” requirement, but makes a violation of this requirement unavailable as an invalidity defense. (Some have argued that an allegation of IC would be still available, and unfortunately, the sloppy language in the so-called “patent law reform” on this doesn’t make clear that IC is out.)

Again, thanks for the thought provoking comments.

No. Things would have turned out different if the claims had not included the cultivating step. Best mode is determined based on what is claimed. This is the point this particular CAFC opinion tries to make.

A very interesting angle you present on “best mode.” I’m sort in Gene’s camp: I think the “best mode” requirement should exist, but that the inventor shouldn’t be punished for simple innocent omission, as opposed to deliberate failure to include to keep the “best mode” a trade secret. I’ve got a similar view for the “intent” standard for “inequitable conduct” (which given the current litigation climate and absurdity with how IC is applied, I would be prefectly happy to join the ROW and ditch).

I have to admit I had never thought of best mode in these terms, but I definitely see where you are coming from and at least initially (on first consideration) I agree. I find myself torn. I like the idea of requiring best information to be disclosed, but don’t like the inequities you point out. I also think the best mode penalty is draconian. It ignores the contribution of the inventor and focuses on deficiencies that kill the right granted. It almost seems like the law is set up with a piracy mentality. Find a problem and then take the invention and all the hard work away. I think best mode should have a less draconian penalty if we are going to keep it, although if patent reform does go through it will be a thing of the past anyway.

-Gene

If one had to explain “best mode” very briefly, part of the communist manifesto may come into mind: ‘From each according to his ability [and according to what he claims]‘.

While it sounds anti-patriotic to accuse the US Congress of engaging in communist like activities, when it comes to inventors (and the best mode requirement) that is exactly what they do. They try to squeeze from each inventor the full value of what he (or she) as an individual has to contribute to the common welfare. That’s part of the quid quo pro bargain.

Therefore you can have two inventors of a same basic thing and yet the smarter of the two inventors is punished into having to disclose more than his dumber cousin. That’s because the smarter cousin has conceived of a better mode of “carrying out” the invention and Congress is going to make sure to squeeze out those extra two ounces of flesh from the smarter inventor by way of the best mode requirement.

Best mode violations are generally found out during litigation rather than during prosecution. The accuser has to come up with clear, convincing and objective evidence showing that the inventor(s) had possession of something they subjectively considered to be a better mode and they did not adequately disclose it (on purpose or otherwise) in the application,