A company from England, AJAX, developed an invention including a surface treatment that was necessary to the satisfactory performance of the invention. In discussions with their legal staff relating to the filing of a patent application in the U.S., the company decided to maintain their surface treatment technology as a trade secret. On September 16, 2012, a patent application was filed in the USPTO without any reference to the surface treatment.I. During the above discussions, one of the inventors stated that based on the new law under the AIA there is no requirement to disclose the best mode in an application.II. At that time one of the legal staff stated that the AIA did not change the requirement that a patent application must set forth the best mode of carrying out the invention.
(A) Only the first statement is correct.
(B) Only the second statement is correct.
(C) Both statements are correct.
(D) Neither statement is correct.
(E) The Question is ambiguous.
ANSWER: (B). See MPEP 2165 (including the examples in MPEP 2165.04, subsection II):
“A third requirement of 35 U.S.C. 112(a) (applicable to applications filed on or after September 16, 2012) is that:
The specification … shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”