The newly passed America Invents Act has a very weird provision regarding the best mode requirement. Everyone is required to disclose the best mode of practicing an invention to obtain a patent under §112 of the patent law. This requirement has not changed. However, failure to disclose the best mode is no longer a defense to patentability in litigation and cannot be used as grounds for invalidity or unenforceability. This is very strange. The Patent Office has only rarely questioned whether the best mode was disclosed, and generally does not have the ability to determine whether or not the best mode was disclosed. Some inventors may roll the dice, and withhold critical trade secret information from a patent application, hoping the Patent Office will not raise the best mode issue. Although not disclosing the best mode is no longer fatal, it may be unethical. Only time will tell if Congress completely removes the best mode requirement to further harmonize U.S. patent law with the rest of the world, or the courts weigh in and force the issue.
