About the Course
Introduction
This CLE webinar will guide IP counsel on the best mode requirement and the impact the AIA had on the requirement. The panel will discuss whether and how to comply with the requirement and what lack of compliance will mean.
Description
The best mode requirement under Section 112 requires inventors to reveal any preferred way of implementing the claimed invention. Following the enactment of the AIA, failure to disclose the best mode is no longer a basis for invalidating a patent. Courts have focused on what the inventor believed was the preferred approach when the application was filed. The USPTO continues to examine applications for best mode compliance. However, examiners rarely enforce this despite the requirement in Section 112(a).
While enforcement is rare, withholding a preferred embodiment is a risk that inventors need to carefully consider before doing it. In addition to being noncompliant with the statute, it can weaken the written description by excluding the optimal version from the scope of the invention. Absent a best mode, the inventor may not protect what they view as the best version of the invention.
Has the AIA meant the death of the best mode requirement? It may depend on who you ask. Failing to disclose the best mode shifts potential protection from patent law to trade secret law. It is then critical for counsel to understand the pros and cons of each mode of protection so the client can make an informed decision.
Listen as our authoritative panel of patent attorneys guides practitioners on the best mode requirement. The panel will discuss the requirement and the impact the AIA has had on it as well as the challenges that arise if the best mode requirement is not met. The panel will discuss best practices for determining whether and how to meet the best mode requirement.
Presented By
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Ms. Gritton is an experienced IP attorney with a broad technical background in both the physical and life sciences. She is experienced in all phases of patent portfolio management with particular expertise in the assessment of patent portfolio strengths and weaknesses, technology transactions, and patent disputes within the pharmaceutical industry.
Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. Dr. Noonan also has over 20 years of experience as a molecular biologist, and is a founding author of the Patent Docs weblog, which focuses on biotechnology and pharmaceutical patent law. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology.
Ms. O’Brien has more than 25 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of Ms. O’Brien’s technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products including new chemical entities and formulations, as well as novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds. Ms. O’Brien’s expertise includes all aspects of preparing and prosecuting U.S. and foreign patent applications, such as patent drafting and prosecution, as well as more complex matters such as reissue and reexamination proceedings, appeals hearings, Post-Grant Reviews (PGR), and Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB). Her litigation expertise focuses on patent infringement cases including, for example, Hatch-Waxman litigation involving Abbreviated New Drug Applications, and includes all stages from pre-discovery through trial.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Thursday, January 22, 2026
- schedule
1:00 PM E.T.
I. Best mode requirement under Section 112
II. Impact of the AIA
III. What excluding the best mode could mean for the inventor
IV. Best practices for complying with best mode
The panel will review these and other important issues:
- Has the AIA meant the death of the best mode requirement?
- In the patent vs. trade secret debate, which inventions are more suitable for patents? Which for trade secrets?
- What factors should counsel consider when determining whether to comply with the best mode requirement and how?
