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Best Mode Requirement By: Gene Quinn, Patent Attorney, White + Quinn, PC |
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This brief excerpt, an excerpt from Glaxo, Inc. v. Novopharm LTD., 52 F.3d 1043, 1050 (Fed. Cir. 1995), succinctly explains the basics of the best mode requirement.
In arguing that Glaxo did not comply with the best mode requirement of § 112, first paragraph, Novopharm relies on Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed.Cir.), cert. denied, 502 U.S. 856, 112 S.Ct. 169, 116 L.Ed.2d 132 (1991), for the proposition that the best mode requirement lies at the heart of the statutory quid pro quo of the patent system. This is true enough. However, Amgen, consistent with the statute, speaks of the best mode requirement in terms of the best mode contemplated by the inventor. Amgen, 927 F.2d at 1210, 18 USPQ2d at 1024 (”Our case law has interpreted the best mode requirement to mean that there must be no concealment of a mode known by the inventor to be better than that which is disclosed.”). In fact, as we have previously stated, the sole purpose of the best mode requirement “is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived.” Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 926, 16 USPQ2d 1033, 1035 (Fed.Cir.1990) (emphasis added) (quoting In re Gay, 309 F.2d 769, 772, 135 USPQ 311, 315 (CCPA 1962)); See Dana Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 419, 8 USPQ2d 1692, 1696 (Fed.Cir.1988), cert. denied, 490 U.S. 1067, 109 S.Ct. 2068, 104 L.Ed.2d 633 (1989).
The best mode inquiry focuses on the inventor’s state of mind at the time he filed his application, raising a subjective factual question. Chemcast, 913 F.2d at 926, 16 USPQ2d at 1035. The specificity of disclosure required to comply with the best mode requirement must be determined by the knowledge of facts within the possession of the inventor at the time of filing the application. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1535, 3 USPQ2d 1737, 1745 (Fed.Cir.), cert. denied, 484 U.S. 954, 108 S.Ct. 346, 98 L.Ed.2d 372 (1987).
That the best mode inquiry is grounded in knowledge of the inventor is even more evident upon contrasting the best mode requirement of § 112 with the enablement requirement of that section. Chemcast, 913 F.2d at 926, 16 USPQ2d at 1035. “Enablement looks to placing the subject matter of the claims generally in the possession of the public.” Spectra-Physics, 827 F.2d at 1532, 3 USPQ2d at 1742. Best mode looks to whether specific instrumentalities and techniques have been developed by the inventor and known to him at the time of filing as the best way of carrying out the invention. Id.; Chemcast, 913 F.2d at 927-28, 16 USPQ2d at 1036. The enablement requirement, thus, looks to the objective knowledge of one of ordinary skill in the art, while the best mode inquiry is a subjective, factual one, looking to the state of the mind of the inventor. Indeed, recently this court in addressing whether an applicant’s best mode had to be updated upon filing a continuation application affirmed that the best mode requirement “focuses on what the inventor knows.” Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 558, 32 USPQ2d 1077, 1083 (Fed.Cir.1994), cert. denied, — U.S. —-, 115 S.Ct. 1102, 130 L.Ed.2d 1069 (1995).
For additional information regarding the best mode requirement, which is unique to US patent law, see:
