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Wealth of Ideas, November 2004
Patent law has many nuances, and even some of the most
basic requirements of a patent application might be
a little confusing. The “best mode” and “enablement”
requirements are two such elements of patentability
that may need further explanation.
“Enablement” refers to the requirement that
a patent enable one of ordinary skill in the art of
the invention to practice that invention – to build
a prototype or follow the steps of a given business
method to achieve the desired result, depending on the
type of patent in question. “Best mode” goes
a step further: not only should the patent be enabling,
but should set forth what the inventor considers to
be the “preferred embodiment,” or the best
way of practicing the invention at the time the patent
application is filed.
The difference between these two requirements becomes
clearer when you compare the reasons for them: “The
enablement requirement looks to placing the subject
matter of the claims generally in the possession of
the public. If, however, the applicant develops specific
instrumentalities or techniques which are recognized
by the applicant at the time of filing as the best way
of carrying out the invention, then the best mode requirement
imposes an obligation to disclose that information to
the public as well.” Spectra-Physics, Inc. v. Coherent,
Inc., 827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.), cert.
denied, 484 U.S. 954 (1987).
In other words, the requirement to make the patent
enabling ensures that the issued patent is actually
a useful document from which the public can benefit;
the best mode requirement then ensures that the inventor
has not withheld information from the public about any
“preferred embodiment” of the invention of
which he or she may be aware when filing the patent
application.
While it’s true that giving up what may be one’s
trade secret in order to obtain a patent is difficult,
full disclosure is necessary for meeting the enablement
and best mode requirements -- so don’t withhold
information about the best mode from the patent attorney
who drafts your application. The patent examiner may
accept your given preferred embodiment at face value,
but if the patent is ever litigated, opposing counsel
will almost certainly examine the patent with a greater
degree of scrutiny than the Patent Office used.
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