I am pleased to join you from south of the border. My work has been focussed in the United States. Intellectual property laws are very powerful and important today. Yet they are but part of the larger body of law in any country. They are also part of a developing fabric of international commercial regulation. I hope that discussions will focus on why one should or should not create personal or exclusive rights in these fields.

To open this conversation, I’ve chosen to focus on a facet of United States patent law, called the “best mode” requirement. This obscure doctrine sheds light on the process and purposes of United States patent law. It also provides a glimpse of how legislators, judges, and attorneys view the inventive process, especially in its commercial environment.

What is “best mode.“ In the US, a patent applicant must disclose all he or she knows about how an invention works. Subject to Supreme Court rulings, the United States has one appellate court, the Federal Circuit, to resolve patent law questions. The Federal Circuit has summed up the disclosure requirements: “To constitute adequate disclosure …, a patent specification must set forth both the manner and process of making and using the invention (the enablement requirement) and the best mode contemplated by the inventor of carrying out the invention (the best mode requirement).” . In short, the  applicant must describe what to do and how best to do it.

Judge Giles Rich made a major impact on the development of United States patent law. He thought the purpose best mode rule was to assure full disclosure of an invention. “There always exists, on the part of some people, a selfish desire to obtain patent protection without making a full disclosure, which the law, in the public interest, must guard against. Hence section 112 calls for description in ‘full, clear, concise, and exact terms' and the ‘best mode’ requirement does not permit an inventor to disclose only what he knows to be his second-best embodiment, retaining the best for himself.” See (Cust. & Pat. App. 1967).

The “best mode” requirement is unique to United States patent law. Even in the United States only certain attorneys, judges and law students cramming for a patent exam know anything about it. Joseph Root is an attorney who has spent a lifetime in patent law. In a recent 80 page article he observed, “Best mode problems are like falling asteroids… when they do strike, big problems follow.” Joseph E. Root, Ducking the Asteroid…, 36 AIPLA Q.J. 455, 457 (2008).

In September 2011, Congress enacted the “” (AIA). It is a packet of changes to the 1952 United States patent law that goes into effect in September 2012. As part of an effort to “harmonize” United States law with that of other nations, the AIA modified the best mode requirement. The amended law retains the requirement that one disclose the best mode, however, failure to do so will no longer render a patent invalid or unenforceable.

It is tempting say the new rule requires one to disclose, but eliminates consequences for failure to do so. However, that summary is misleading. The fundamental rule remains: Disclose the invention! The law continues to require one to disclose exactly how an invention works. Failure to do so will render a patent invalid. Furthermore, concealing relevant information from the Patent Office will also invalidate a patent.

Don’t hide the ball. Most inventions are improvements of something that came before--engines, suspension systems, antibiotics, software, and on and on. Thus, most disclosures amount to describing a better way of doing something. Better and best overlap. The Federal Circuit has repeatedly emphasized that describing how to do something and the best way of doing it converge: “The focus of the best mode requirement, as it was with the enablement requirement, is on the claimed invention. Thus, before determining whether there is evidence of concealment, the scope of the invention must be delimited.”.

The bottom line for practitioners and applicants remains the same before and after the effective date of the AIA. When applying for a patent, one must disclose what one knows about the invention. Candor is the essence of the patent system. The constitutional goal of the US patent system is to expand knowledge and to provide useful new inventions to the public. Attorney Root summed the matter up: “Never appear to hide the ball: Always disclose specially made materials, inventor choices based on test results, and essential process steps.”

The new rules clearly change how courts handle claims that a patent is invalid. However, as the Federal Circuit emphasized, best mode and enablement overlap. Thus, much of the same evidence will come into a trial before and after the effective date. Failure to include information can be found to be “hiding the ball” from the Patent Office. In some cases, it may amount to failure to disclose fully the enablement.

Howard C. Anawalt is a United States attorney, law professor, and writer. His latest book is Idea Rights: A Guide to Intellectual Property (Carolina Academic Press 2011). He discusses the subject in an Authors@Goggle presentation,

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The case of involved a particular invention developed by a prominent professor of surgery (Dr. Gray) at UWA. UWA argued, that by virtue of Dr. Gray's employment contract with the school, all of his inventions and associated patents belonged to it. This claim was promptly dismissed by the primary judge of the federal court.

Although Dr. Gray's contract of employment stipulated that he was to conduct research (as well as teach and conduct examinations), he was under no express obligation to invent. Consequently, it was found that UWA did not have an interest in his invention or relevant intellectual property rights simply due to his status as a university employee. The full court also held that Dr. Gray was under no fiduciary duty to UWA and as such, he was not found to be accountable to the university for proceeds derived from his invention or the associated intellectual property rights. Further, there were no effective express or implied terms relating to the ownership of intellectual property rights in Dr. Gray's employment contract.

As a result of the ruling in this case, universities who wish to retain IP rights in the inventions created by their employees will have to lend more careful consideration to IP ownership clauses in employment contracts to allow for less confusion in the future. In a similar vein, corporations that associate with universities and academics should rigorously strive to ensure that employment contracts are clear, concise and that there are no ambiguities in the language concerning the ownership of IP rights.

While the court did explicitly mention that the present case was decided fairly narrowly, it is still important for universities, academics and corporations to have a clear understanding of the intricacies of IP rights ownership under various circumstances to enable the successful commercialization of innovative ideas.

It is important for governments to maintain a financial incentive for intelligent and skilled researchers to continue inventing and innovating, since it is society who ultimately benefits from this type of behaviour. I strongly agree with the full court's reasoning in this case. As I mentioned earlier, the present case was decided narrowly and should only apply in situations where the employment contract contains no duty to invent, there is no express/implied provision suggesting that the university in question owns the IP, and where the researcher owes no fiduciary duty to their employer. In the case where a university has a legitimate claim to an invention (and associated IP rights) created by an employee (i.e.  where research funds are procured by the institution directly), the employer should take extra precaution and ensure that this is expressly noted in the contract of employment.

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