Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
of practicing the invention in the patent application, the lack of best mode cannot be raised by third parties in post‐grant reviews of patents newly authorized by the AIA.
Theoretically, a Patent Examiner could still reject a patent application on the grounds of failing to disclose the best mode of the invention. However, since the USPTO rules do not allow a Patent Examiner to obtain information from the applicant through a “discovery” process as used in litigation in the United States, the examiner has practically no way of determining whether or not the inventor has disclosed the best mode.
In my opinion, this is one of the conundrums that may be understood further as time goes by, and as future court decisions consider this point.
In my judgment, best practices dictate that the disclosure of the invention in the patent application must be of the best mode of practicing the invention known to the inventor at the time of the invention disclosure meeting. Since there is a time lag between the first meeting with the patent attorney and the actual completion of the patent application, if the invention has been improved during that time period, the later developments must be described to the patent attorney, so that the latest, best mode of the invention can be included in the patent application upon filing. Also, if the inventors have developed alternative embodiments of the invention during this time period, these should be described so that the patent attorney can determine which of the alternative embodiments should also be described in the patent application. Each and every remote possible embodiment does not need to be described, but the presentation of alternate embodiments helps the lawyer draft the description and claims in the patent application to provide broad enough protection to cover any manifestation of the invention that a potential infringer could later develop.
7.3.3 Dates of First Public Disclosure, If Any, and What Was Disclosed
As we have already discussed, if an invention was in public use or on sale, or offered for sale anywhere more than a year before the date that the invention is initially disclosed to the patent attorney, patent protection cannot be obtained for that particular invention. In those cases, I have usually advised inventors to develop an improvement to their invention, and then a patent application can be filed covering the improvement. However, the prior public activities of the inventor more than a year before the filing of the patent application may have destroyed any patent rights the inventor might have obtained in the original invention.
Also, determine whether or not there has been a public disclosure or public knowledge of the invention less than a year before the date of the invention disclosure meeting, since it is important to know whether foreign patent rights have been affected by such disclosure. It is also important to know when the 1‐year U.S. “statutory bar” will be effective due to a public disclosure of the invention, to enable a patent application to be filed before the 1 year bar date.
In making your disclosure to the patent attorney, it is important to indicate what acts took place and what facts surround the circumstances relating to any prior disclosure of your invention that was made to others, either prior to a year or within a year of the invention disclosure meeting. It's possible that the public disclosures you made were only of an experimental version of your invention, and therefore did not comprise disclosure of a complete invention such as will destroy patent rights. If there has been no prior public disclosure of the invention, the patent attorney will most assuredly advise you to refrain from disclosing, publicly using, selling, or offering to sell the invention prior to the date the patent application is actually lodged with the U.S. Patent & Trademark Office. The potential adverse effects of such public disclosures on patent rights need not be repeated.
You must also disclose to the patent attorney how you gained knowledge of the concept of your invention. Obviously, if you derived the invention from a showing of the same invention from another source, you are not the first inventor and cannot obtain a patent. Also, an applicant cannot discover an invention in another country and apply for a patent in the United States, since the applicant cannot comply with that portion of the statute requiring that the inventor certify that he or she is the original and first inventor.
Since “experimental use” is not a public use of a complete invention and therefore is not a bar to obtaining a U.S. patent, when meeting with the patent attorney for the first time, the inventor should, in describing all outside uses and showings of the invention to others, present sufficient facts to enable the patent attorney to determine whether or not such use could be classified as “experimental” or not. Thus, even though you may have previously exposed a portion of the subject of the invention to third parties, the attorney may advise you that this is not necessarily a bar to patentability. Also, it is important to advise the attorney of any prior publication(s) by the inventor or inventors to determine when and which features of the invention were disclosed, and which were not disclosed in such prior publications. Non‐disclosed features can still form the subject matter of a patent application. Keep in mind also that disclosures to others made under the aegis of a signed NDA are not “public” disclosures, and are not a bar to obtaining a patent.
7.3.4 Advantages of the Invention Over Known Devices/Processes
After disclosing to the patent professional your information about the structure, operation/function, and results achieved by your invention, it is important to disclose to the patent professional the advantages of your invention, and how those advantages are realized from the structure of the invention, the operation or function of that structure, and the results achieved by the operation and/or function of that structure. In other words, what structure and/or function of the invention produces the advantages over the prior art. The advantages should be expressed both in broad terms and in more limited terms. These advantages provide the “selling points” for persuading the Patent Examiner that the invention is indeed a step forward in the useful arts. Such advantages also may assist in defining the “contribution” to the advance in the art that this particular invention offers to the public. More importantly, I have personally noticed that the courts tend to rely upon the advantages of the invention and the contribution of the inventor to an advance in the art to support their decisions upholding patentability. If the patent attorney at the initial meeting does not ask you what advantages are provided by the invention, tell him or her anyway. In my view, this is most important.
7.3.5 What Prior Art the Inventor is Aware of for Disclosure to the Patent Examiner
During the first meeting with your patent professional regarding an invention, the patent professional will prudently ask you to disclose to her or him all information you are aware of regarding the state of the prior art relating to the subject matter of your invention. This involves disclosure to the patent attorney of your knowledge of printed or electronic publications, similar devices already existing in the market, issued patents, and any other prior acts or materials of either the inventor(s) themselves or others that may relate to the subject matter of the invention. The reason is that Rule 56 of the USPTO Rules (37 C.F.R. §1.56) requires that an inventor and the inventor’s attorney or agent disclose “information they are aware of which is material to the examination of the application” to the Patent Examiner prior to the commencement of examination, and during the entire time of the examination process. The determination of whether such prior art would be material to examination depends upon whether that prior art would be considered by the Examiner as information which is material to patentability in deciding whether or not to issue the patent. Normally, an Information Disclosure Statement is submitted to the Patent Examiner at the time of filing the application, setting forth all prior art that the inventor and the attorney are aware of that is material to examination of the application. This would include all prior art that was uncovered by a pre‐filing patentability search.
In my judgment, the purpose of the prior art disclosure rule is twofold. First, the applicant and the attorney are legally held to a strict duty of candor in making a showing before the USPTO of the reasons they believe the inventor is the first inventor. It is no longer possible to attempt to hide prior art that you are aware of from the Examiner, and obtain issuance of a patent upon the theory that the Examiner