Best Mode Trade Secrets
Brian J. Love
Santa Clara University School of Law
Christopher B. Seaman
Washington and Lee University School of Law
May 10, 2012
Yale Journal of Law & Technology, Vol. 15, p. 1, 2012
Trade secrecy and patent rights traditionally have been considered mutually exclusive. Trade secret rights are premised on secrecy. Patent rights, on the other hand, require public disclosure. Absent a sufficiently detailed description of the invention, patents are invalid. However, with the passage of the Leahy-Smith America Invents Act (“AIA”) last fall, this once black-and-white distinction may melt into something a little more gray. Now, an inventor’s failure to disclose in her patent the preferred method for carrying out the invention — the so-called “best mode” — will no longer invalidate her patent rights or otherwise render them unenforceable.
In this Essay, we explain why it may become routine post-patent reform for patentees to attempt to assert both patent rights and trade secret rights for preferred embodiments of their invention in certain types of cases. We also consider potentially undesirable ramifications of this change and suggest one approach courts may use to limit claims of concurrent trade secret and patent protection when equity demands.
Number of Pages in PDF File: 23
Keywords: patent, trade secret, best mode, AIA, America Invents Act, preferred embodiment, unclean hands
JEL Classification: K00, K39, O34
Date posted: May 13, 2012 ; Last revised: December 17, 2012
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