New patent law removes the teeth behind disclosure of “best mode”

The America Invents Act changes the bargain created in the nineteenth century when Congress granted inventors a limited monopoly on their invention in exchange for revealing to the world how it works in its “best mode.” According  to Jake Holdreth and Joseph Hosteny, writing in Corporate Counsel, the compromise presented in AIA creates "confusion and uncertainty."

AIA continues to call for disclosure of “best mode” in Section 15 but made it unenforceable in court:  "...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..."

This compromise will inevitably create friction between patent filers and their advisors. Lawyers are ethically bound to tell their clients to make complete, “best mode,” disclosures. Others may not feel that same pressure.