Problem from WD Chapter

1
Problem from WD Chapter

• Can you help Rameau?

2
Best Mode
3
112(1)

• The specification shall set forth the best
  mode contemplated by the inventor of carrying out
  his invention.

4
Distinct from Enablement WD

• An application can enable skilled artisans to
  make and use the invention, yet fail to disclose
  the best mode.
• A way to make the invention is disclosed, but not
  the best way.
• Well come back to this

• An application can provide a written description
  of the invention, and yet fail to disclose the
  best mode.
• The invention is described, but the best way of
  carrying it out is not.

5
How Best Mode Comes Up

• Prosecution
• Examiner could raise best mode, but seldom do for
  reasons you ought to be able to figure out. See
  below.

• Litigation defendant will argue inventor had
  best mode that was not disclosed
• Claim by claim
• CC evidence
• Even though PTO didnt examine (most likely)

6
Purposes

• Heart of quid pro quo restrains inventors from
  applying for patent while concealing preferred
  embodiments which they have in fact conceived and
  claimed.

• Pre-expiration Broadest disclosure enables more
  and better improvements.
• Post-expiration public can compete fairly?

7
Black Letter Law

• Not an easy task
• Not statutorily defined terms
• Highly fact specific

• Focus at time of application
• No duty to update during prosecution
• Two steps
• Subjective
• Inventor
• Time of filing
• Best?
• Objective
• Claimed?
• POSA

8
Administrative

• Very scarce
• Why?
• US Imposition
• To get benefit of foreign filing date, it must
  disclose best mode
• So, US exports its requirement

• If realize after filing inventor had best mode
  that is omitted
• Add it to spec through amendment that adds new
  matter
• CIP
• Lose original filing date
• Dont add it
• Bad idea generally

9
Chemcast

• What was the omitted best mode?
• What language in the claim claimed this?
• Why wasnt the fact that the inventor did
  disclose PVC at 70 or higher disclose enough?
• What if these grommets had been used in a million
  cars, and a POSA could figure out the best mode?

• What does the best mode requirement add to
  enablement according to this court?

10
Problems in Book

• No. Why?
• No. Why?
• No. Why?