Q) Best Mode

by patentbar on May 17, 2007 · 34 comments

in Exam Questions


One question about best mode. One of the answer choices is: If applicant doesn’t designate a best mode, but puts forth several embodiment – the application does not require a statement which specifically points out the best mode.

2165.01 Considerations Relevant to Best Mode
[…]III. DESIGNATION AS BEST MODE IS NOT REQUIRED
There is no requirement in the statute that applicants point out which of their embodiments they con­sider to be their best; that the disclosure includes the best mode contemplated by applicants is enough to satisfy the statute.

{ 34 comments… read them below or add one }

1 samboNo Gravatar September 12, 2009 at 10:38 am

Q. yesterday on best mode. Which is in accord with MPEP>…

1.Best mode is same as Enablement Req. —obvioulsy NO!

2.Best mode is the best mode made by inventor at the time of filing, as opposed to another inventor. <–couldnt find in MPEP but chose this

3..5 cant remember

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2 StephNo Gravatar January 13, 2010 at 10:17 pm

i had this question on my exam yesterday (Jan 12 2010)
I remember that one of the choices was something like “if the inventor discloses a bunch of modes including the one he thinks is the best without explaining which one he thinks is the best, the best mode requirement is still satisfied”

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3 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 9:58 pm

that sounds correct

4 SNo Gravatar June 5, 2010 at 7:00 am

I got three best mode questions.

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5 Boating BobNo Gravatar December 30, 2010 at 6:13 pm

Had this 12/30/10:
Which is in accord with MPEP:
(a) best mode same as enablement in 112
(b) at time of filing inventor must disclose best mode they know of if discovered by another person
(c) inventor must disclose which embodiment is the best mode
(d) failure to provide the best mode known by the inventor at time of filing can be corrected after issue of the patent by amending the spec.
(e) inventor can keep the best mode secret to exploit it later for financial gain.

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6 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 10:00 pm

see the variant to choice C – which says the inventor need not disclose which embodiment is the best mode. That is a better answer in that variant.

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7 JustinNo Gravatar January 1, 2011 at 5:20 pm

Did you choose (b) at time of filing inventor must disclose best mode they know of if discovered by another person?

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8 DNo Gravatar January 16, 2011 at 8:56 am

Answer (b) seems right. “All applicants are required to disclose for the claimed subject matter the best mode contemplated by the inventor even though applicant may not have been the discoverer of that mode.” MPEP § 2165 (citing Benger Labs. Ltd. v. R.K. Laros Co., 209 F. Supp. 639 (E.D. Pa. 1962)).

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9 TomNo Gravatar January 11, 2011 at 4:59 pm

My answers were slightly different but it was basically B. That inventor must disclose best mode at the time of filing

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10 AnneNo Gravatar January 19, 2011 at 4:04 pm

Got this one today.

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11 VeNo Gravatar January 27, 2011 at 7:07 pm

Got this one today. The correct answer had something to do with satisfying the requirement by disclosing the info in the spec but not having to point out it was the best mode.

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12 ELSNo Gravatar March 7, 2011 at 11:06 am

Saw this one yesterday. Choose the same answer as Ve.

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13 OverworkkedNo Gravatar April 28, 2011 at 1:22 pm

VARIANT on 4/27/2011 E8R8:

Which is TRUE?

(a) best mode same as enablement in 112
(b) at time of filing inventor must disclose best mode they know of if discovered by another person [or some variant on this that didn’t make sense to me]
(c) Inventor discloses several embodiments, one of which is his best mode, but does not point out in the spec that this is his best mode (My Answer, same reasoning in above posts)
(d) failure to provide the best mode known by the inventor at time of filing can be corrected after issue of the patent by amending the spec.
(e) inventor can keep the best mode secret to exploit it later for financial gain.

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14 FredsNo Gravatar June 2, 2011 at 3:17 am

(c) is right, that’s the case law see Radomex.
Just to clarify wrong ideas floating around here, best mode is the best mode contemplated by the inventor at the time of application. The best mode known by others at that time cannot be imputed to the inventor. If it’s joint inventorship, it’s the best mode of the invention claimed known by the joint inventors.

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15 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 9:54 pm

That is correct.

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16 PipolagNo Gravatar June 21, 2011 at 4:08 pm

I’m sorry guys but the correct answer is indeed (B). It’s straight out of the MPEP 2165: “All applicants are required to disclose for the claimed subject matter the best mode contemplated by the inventor even though applicant may not have been the discoverer of that mode. Benger Labs. Ltd. v. R.K. Laros Co., 209 F. Supp. 639, 135 USPQ 11 (E.D. Pa. 1962).”

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17 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 9:49 pm

Pipolag – given the choices listed by overworkked. I think the answer is C. Both B and C are out of the MPEP. “Specific Example is not required” and “Designation as Best Mode is not required”.
However when there are several modes – one of them is the best mode (his best mode). If there is a better mode – as by someone else, it can be listed, but it doesnt govern the statute requiring the inventor to list his own.
– see the case law :
The provisions of 35 U.S.C. §112 require that the
specification of a patent application or patent set forth the
“best mode” contemplated by the inventor of carrying out his
invention at the time the application was filed. Even if there is
a·better mode, the invenTor’s failure to disclose it in his patent
will not invalidate the patent (35 U.S.C. §112) if the inventor
did not, at the time of the filing of his application for patent,
believe that it was, in fact, the best mode. It is enough that
the inventor acted in good faith in his patent disclosure as of
the time his application for patent was actually filed. Benger
Laboratories, Ltd. v. R. K. Laros Co., 209 F. Supp. 639, 644, 135
U.S.P.Q. 11, 15- 16 (E.D. Pa. 1962}, aff’d per curiam, 317 F.2d
455, 137 U.S.P.Q . 693 (3rd Cir . 1963), cert. denied, 375 U.S. 833
(1963); In re Gay, 309 F.2d 769, 772 – 73, 135 U.S.P.Q . 311, 315- 16
(C.C.P.A. 1962).

HERE IS THE LINK:
http://ipmall.info/hosted_resources/Activision_Litigation_Documents/01-07-85_to_04-16-85/Plaintiffs_Pretrial_Proposed_Conclusion_Of_Law.pdf

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18 DannyNo Gravatar September 19, 2011 at 12:49 pm

This case law is talking about a situation where the best mode has already been designated when filed, but the inventor finds a better mode later. In this instance, there is no need to disclose the better one. But, without stating the best mode at filing, the app. is incomplete and will be rejected under 112.

19 BigBadVoodoDaddyNo Gravatar July 18, 2011 at 12:15 am

Had this question on jul 12th. Both the choices mentioned above show up. It is obvious the answer is something which says – you dont have to designate the best mode among all the embodiments you have listed.

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20 DannyNo Gravatar September 15, 2011 at 5:43 pm

i don’t understand this answer. You need to have a best mode under 112. Your answer seems to indicate that you don’t. Please reconcile.

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21 SkirlNo Gravatar July 9, 2014 at 1:15 pm

MPEP 2165.01

III. Designation of Best Mode is not Required

“There is no requirement in the statute that applicants point out which of their embodiments they consider to be their best; that the disclosure includes the best mode contemplated by applicants is enough to satisfy the statute. Ernsthausenv.Nakayama, 1 USPQ2d 1539 (Bd. Pat. App. & Inter. 1985).”

22 BobNo Gravatar August 3, 2011 at 2:10 am

Got this on 8/2/11. Same as BigBadVoodoDaddy.

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23 maggieNo Gravatar August 26, 2011 at 12:22 am

Got this one 8/24 pointing out the best embodiment is not required only disclosure is required.

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24 DannyNo Gravatar September 15, 2011 at 5:44 pm

Same question for you. Your answer seems to indicate that best mode is not required. Please reconcile.

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25 JeremyNo Gravatar September 22, 2011 at 3:53 pm

The distinction seems to be: best mode is DISCLOSED when it is one of the one or more embodiments presented, however it need not be POINTED OUT. The requirement is that it be present (disclosed).

26 maggieNo Gravatar October 16, 2011 at 5:37 pm

Yes, As Jeremy states (below). Best mode does not need to be directly pointed out in application but does need to be disclosed somewhere.

27 sgwNo Gravatar October 16, 2011 at 4:19 pm

Got this 10/16/2011.
Applicant does not have to specify which is the best mode, etc.

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28 RemandedNo Gravatar January 20, 2012 at 7:40 pm

Saw this 20 January 2012.

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29 TheGhostOfBilskiNo Gravatar April 10, 2012 at 11:38 pm

similar Q 4/6/2012

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30 SolNo Gravatar April 11, 2012 at 2:17 pm

Best mode
Who decides it is the Best mode? The inventor. Not anyone else or posista. It is subjective. As long as the inventor disclose the best mode he things, then it is OK. And the inventor does not need to point out which is the best mode as long as the best mode in his mind is included in the application. AND it is at the time of filing

Inventor has disclosed A, B, C modes and did NOT disclose X mode
Others, at the time of filing, made E, F modes
If A is the best mode in the inventor’s mind, It is not desginated is the best mode, OK
If the inventor cannot tell wich one is the best, but sure X is not the best mode, OK
If the inventor consier X the best mode, TROUBLE

If the inventor does not know E, F, OK not to disclose
If the inventor know E, F and consier them inferior to A/B/C (regardless if it is objective correct or not), OK not to disclose
If the inventor know E and consider E is the best mode, he HAS TO disclose E even if he is not the one who discovered it.

The failure to disclose a better method will not invalidate a patent if the inventor, at the time of filing the application, did not know of the better method ORdid not appreciate that it was the best method.

All applicants are required to disclose for the claimed subject matter the best mode contemplated by the inventor even though applicant may not have been the discoverer of that mode. Benger Labs. Ltd. v. R.K. Laros Co., 209 F. Supp. 639, 135 USPQ 11 (E.D. Pa. 1962).

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31 GDBNo Gravatar April 19, 2012 at 7:09 pm

Got a best mode question 04/19/12

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32 RandomNo Gravatar October 15, 2012 at 8:53 pm

Got this one today.

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33 VokAccousNo Gravatar May 31, 2013 at 9:00 am
34 TheHumanFamilyNo Gravatar January 8, 2014 at 12:41 pm

Had this yesterday. Key: “while best mode is an essential part of 112-1st paragraph, an applicant can show best mode by showing a bunch of enablements. He need not designate which one he thinks is the best mode.” Passed. This site is great, btw.

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