From "Wealth of Ideas" e-newsletter, November 2004

Patent law has many nuances, and even some of the most basic requirements of a patent application might be a little confusing. The "best mode" and "enablement" requirements are two such elements of patentability that may need further explanation.

"Enablement" refers to the requirement that a patent enable one of ordinary skill in the art of the invention to practice that invention – to build a prototype or follow the steps of a given business method to achieve the desired result, depending on the type of patent in question. "Best mode" goes a step further: not only should the patent be enabling, but should set forth what the inventor considers to be the "preferred embodiment," or the best way of practicing the invention at the time the patent application is filed.

The difference between these two requirements becomes clearer when you compare the reasons for them: "The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public. If, however, the applicant develops specific instrumentalities or techniques which are recognized by the applicant at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well." Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.), cert. denied, 484 U.S. 954 (1987).

In other words, the requirement to make the patent enabling ensures that the issued patent is actually a useful document from which the public can benefit; the best mode requirement then ensures that the inventor has not withheld information from the public about any “preferred embodiment” of the invention of which he or she may be aware when filing the patent application.

While it’s true that giving up what may be one’s trade secret in order to obtain a patent is difficult, full disclosure is necessary for meeting the enablement and best mode requirements -- so don’t withhold information about the best mode from the patent attorney who drafts your application. The patent examiner may accept your given preferred embodiment at face value, but if the patent is ever litigated, opposing counsel will almost certainly examine the patent with a greater degree of scrutiny than the Patent Office used.