To obtain a patent, the inventor must “set forth the best mode contemplated by the inventor of carrying out his invention” in his patent application. 35 U.S.C. § 112, ¶ 1.  Before the Leahy-Smith America Invents Act (“AIA”) a patent applicant’s failure to disclose the best mode was a basis for invalidity in litigation. Though it remains grounds for a patent examiner to reject claims during prosecution, after patent reform a patentee’s failure to disclose best mode is no longer grounds for a court to declare a patent invalid. See AIA, Pub. L. No. 112-29, § 15(a), 125 Stat. 284, 328 (2011) (to be codified at 35 U.S.C. § 282(b)(3)). This decision by Congress is widely regarded to have “effectively eliminated the best mode requirement from patent law.” Lee Petherbridge & Jason Rantanen, In Memoriam Best Mode, 64 Stan. L. Rev. Online 125, 127 (2012).

Professors Brian J. Love and Christopher B. Seaman suggest that this development could give rise to concurrent patent and trade secret protection.  Brian J. Love & Christopher B. Seaman, Best Mode Trade Secrets, 15 Yale J.L. & Tech. (forthcoming 2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2056115. Though long considered mutually exclusive forms of protection, Love and Seaman “predict that a significant number of patent owners will attempt to obtain belt-and-suspenders protection for their inventions by relying on patents and trade secrecy.” Id. at 8. Love and Seaman foresee patentees pursing patent protection for the core features of their inventions at the same time they keep as trade secrets the most valuable commercial embodiment. See id. at 12 (providing an illustrative example of dual protection). This means accused infringers could find themselves in the position of having to defend claims of patent infringement and misappropriation of trade secrets arising from the same facts.

What was Congress thinking? Apparently it did not consider this particular issue. Love and Seaman found the legislative history of the AIA “largely silent” on whether patent reform’s changes to best mode “might result in inventors withholding best mode from patent applications and subsequently claiming trade secret protection.” Id. at 7.

Courts might try to use equitable doctrines to mitigate the impact of Congress’ apparent oversight. Love and Seaman suggest that courts could use the equitable doctrine of unclean hands to “dismiss a parallel trade secret claim brought in a case where the asserted trade secret should have been disclosed as the best mode in the inventor’s patent.” Id. at 16. Since patentees still have to disclose best mode even after the AIA, accused infringers might argue “that it is unjust for the courts to allow patentees to violate the best mode requirement and then improperly reap the benefits of their misconduct by turning to trade secrecy.” Id. at 17.

Whether these equitable arguments are persuasive will be an interesting issue to follow as the courts grapple with the AIA. It might take years to get definitive answers, likely from the Federal Circuit, but perhaps even the United States Supreme Court.