In Memoriam Best Mode

By Professor Lee Petherbridge & Associate Professor Jason Rantanen (Iowa)

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act ("AIA" or "Act").[1] It embodies the most substantial legislative overhaul of patent law and practice in more than half a century. Commentators have begun the sizable task of unearthing and calling attention to the many effects the Act may have on the American and international innovation communities.[2] Debates have sprung up over the consequences to inventors small and large,[3] and commentators have obsessed over the Act's so-called "first-to-file" and "post-grant review" provisions. Lost in the frenzy to understand the consequences of the new Act has been the demise of patent law's "best mode" requirement.

The purpose of this Essay is to draw attention to a benefit the best mode requirement provides--or perhaps "provided" would be a better word--to the patent system that has not been the subject of previous discussion. The benefit we describe directly challenges the conventional attitude that best mode is divorced from the realities of the patent system and the commercial marketplace. Our analysis suggests that patent reformers may have been much too quick to dismiss best mode as a largely irrelevant, and mostly problematic, doctrine.

Read the full piece on Stanford Law Review.

[1]Pub. L. No. 112-29, 125 Stat. 284 (2011) (to be codified in scattered sections of 35 U.S.C.).

[2]See Jason Rantanen & Lee Petherbridge, Commentary, Toward a System of Invention Registration: The Leahy-Smith America Invents Act, 110 Mich. L. Rev. First Impressions 24 (2011)

[3]See Lee Petherbridge & Jason Rantanen, Jay P. Kesan, Debate, America Invents, More or Less?, 160 U. Pa. L. Rev. PENNumbra 229 (2012)