Best Mode Trade Secrets

23 Pages Posted: 13 May 2012 Last revised: 17 Dec 2012

Brian J. Love

Santa Clara University School of Law

Christopher B. Seaman

Washington and Lee University School of Law

Date Written: May 10, 2012

Abstract

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.

Keywords: patent, trade secret, best mode, AIA, America Invents Act, preferred embodiment, unclean hands

JEL Classification: K00, K39, O34

Suggested Citation

Love, Brian J. and Seaman, Christopher B., Best Mode Trade Secrets (May 10, 2012). Yale Journal of Law & Technology, Vol. 15, p. 1, 2012. Available at SSRN: https://ssrn.com/abstract=2056115 or http://dx.doi.org/10.2139/ssrn.2056115

Brian J. Love (Contact Author)

Santa Clara University School of Law ( email )

500 El Camino Real
Santa Clara, CA 95053
United States

Christopher B. Seaman

Washington and Lee University School of Law ( email )

Lexington, VA 24450
United States
540-458-8520 (Phone)

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