EDITOR’S NOTE: This article is Part 4 in the America Invents Act: Traps for the Unwary series. I will be speaking on this topic at the AIPLA annual meeting on October 24, 2013. CLICK HERE to register for the AIPLA annual meeting.
Trade Secrets Now Patentable
This will seem almost unbelievable to many, but as of March 16, 2013, long held trade secrets are now patentable. In fact, should Coca-Cola want to patent a secret process for making Coke they would be able to do so. But how is that possible?
35 U.S.C. 102 (a)(1) now reads:
A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…
The USPTO explained their interpretation of the critical “or otherwise available to the public” language as follows:
Residual clauses such as “or otherwise” or “or other” are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the “or otherwise available to the public” residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.
Therefore, if you have a long held trade secret — and really kept it secret — it simply will not be considered prior art any more for a patent application. So if you have been telling clients that they could not patent a long held trade secret, as was the proper advice under pre-AIA 102, you should re-evaluate. Those trade secrets are patentable now when on March 15, 2013 and earlier they were not.
The Re-patenting of Inventions
Not every claimed invention will be able to be re-patented, but there will undoubtedly be some that will be able to be re-patented. This is possible thanks to 35 U.S.C. 102(b)(2)(C), which says:
A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if — the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Subsection (a)(2), otherwise known as 102(a)(2), says:
A person shall be entitled to a patent unless— the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
So, if a patent or published patent application is commonly owned it may not be considered prior art against an identical set of claims in a subsequently filed patent application.
Of course, 102(b)(2)(C) does not eliminate prior art that qualifies under 102(a)(1), but 102(a)(2) makes the patent application prior art as of its effective filing date of the claimed invention. So if you keep your invention secret and file a patent application it will be secret (and not prior art) up until the application publishes 18 months after filing. If you then re-file a second application with identical claims before publication of the first application there would be no 102(a)(1) prohibition. 102(a)(2) would make that first filing prior art as of its effective filing date, but if you remove 102(a)(2) through common ownership then a common owner would be able to effectively extend their patent term by up to 18 months; longer if publication doesn’t occur at 18 months.
On limiting factor of 102(b)(2)(C) is that the second or subsequent application containing identical claims would need to be filed by another inventor. Nevertheless, look for pharmaceutical companies to seek to exploit this re-patenting loophole. An extra 18 months of patent protection could mean many billions of dollars for a blockbuster drug.
The best mode requirement historically created a statutory bargained-for-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention. In 1995 the United States Court of Appeals for the Federal Circuit succinctly explained the basics of the best mode requirement:
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. The best mode inquiry focuses on the inventor’s state of mind at the time he filed his application, raising a subjective factual question. 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. 
The Federal Circuit went on to compare and distinguish the best mode requirement and the enablement requirement as follows:
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. Enablement looks to placing the subject matter of the claims generally in the possession of the public. 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. 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. 
Thus, the best mode requirement was a safeguard against the desire on the part of some inventors (or their employers) to obtain patent protection without making a full disclosure as required by the statute. Failure to disclose the best mode of the claimed invention was grounds for finding the claim at issue invalid.
With the enactment of the AIA the best mode requirement has largely been gutted, although it still remains a part of 35 U.S.C. 112(a), as does the enablement and written description requirements still. Still, the failure to disclose the best mode is no longer a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. This applies to all litigation proceedings commenced on or after September 16, 2011. Specifically, Sec. 15(b) of the AIA also provides:
Sections 119(e)(1) 20 and 120 of title 35, United States Code, are each amended by striking “the first paragraph of section 112 of this title” and inserting “section 112(a) (other than the requirement to disclose the best mode)”.
Thus, no longer will a previously filed application need to disclose the best mode in order to be entitled to claim priority.
The question must then become – why would Congress keep the best mode requirement if they were going to render it useless insofar as determining validity and priority claims? Why not eliminate the best mode requirement from 35 USC 112?
The USPTO did notice that while the lack of a best mode disclosure cannot be used to invalidate a claim or to prevent a claim of priority, the disclosure of the best mode remains one of the patentability requirements pursuant to 35 U.S.C. 112(a). For example, on September 20, 2011, just days after President Obama signed the AIA into law, a memorandum authored by Robert W. Bahr, who was then Senior Patent Counsel and Acting Associate Commissioner for Patent Examination Policy, was circulated to the Patent Examining Corps. In this memorandum Bahr explained:
Section 15 of the Leahy-Smith America Invents Act does not eliminate the requirement in 35 U.S.C. 112, first paragraph, for a disclosure of the best mode, but does amend 35 U.S.C. 282 (the provisions that sets forth defenses in a patent validity or infringement proceeding) to provide that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As this change is applicable only in patent validity or infringement proceedings, it does not alter current patent examining practices set forth in MPEP 2165 for evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112. 
Thus, 35 USC 112 still requires the disclosure of the best mode known to the inventor, so legally applicants are still required to disclose the best mode even though failure to do so will not invalidate an otherwise valid claim. Of course, one could legitimately ask the viability of the USPTO continuing to consider best mode given that it is a purely subjective test in the first part, which seeks to determine what the inventor actually preferred. The patent examiner would only in the most extremely rare cases ever be privy to information relating to the subjective preferences of inventors. Still, it is theoretically possible in that rare case, and if the patent examiner is made aware of preferences held by the inventor(s) the claims implicated should not be granted.
Of course, for patent practitioners the real question may be whether the Office of Enrollment and Discipline will pursue individuals who fail to include the best mode in an application. It seems unlikely that OED would seek to initiate disciplinary enforcement against a patent practitioner who failed to include the best mode of the claimed invention in the patent application filed, although it would be theoretically possible particularly if the failure to disclose the best mode was intentional. That would suggest that the patent practitioner was seeking a claim to which he or she knew the client was not entitled to receive. Although there is not a specific rule that directly says that a practitioner is not entitled to seek a claim to which they know they are not entitled to receive that could at least arguably be an offense pursuant to 37 C.F.R. 11.18 (Signature and certificate for correspondence filed in the Office), 37 C.F.R. 11.301 (Meritorious claims and contentions) or 37 C.F.R. 303 (Candor toward the tribunal).
CLICK to CONTINUE READING — up next: third party submissions of prior art.
 Glaxo, Inc. v. Novopharm LTD., 52 F.3d 1043, 1050 (Fed. Cir. 1995).
 Memorandum to Patent Examining Corps, Requirement for a Disclosure of the Best Mode (last visited August 29, 2013).