AIA creates a new class of trade secrets: best mode

Brian Love of Stanford University and Christopher Seaman of Washington and Lee University of Law have exposed a potential problem Congress created with the America Invents Act (AIA).

Traditionally, inventors choose between revealing details of their invention and getting patent protection or keeping those details secret and earning trade secrets protection. Now that failure to reveal in a patent application the best mode for using an invention can no longer be used to invalidate a patent (though the requirement to reveal best mode is technically retained in section 112, there is no penalty for not so including), an inventor can apply for patent protection for an invention and keep the best mode for use a secret, in effect creating concurrent rights and, perhaps, adding to IP value.

Love and Seaman explain why this approach may become routine, why it may not be in society’s best interest, and how the courts can limit claims of concurrent trade secret and patent protection.