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ARTICLE · 20 MAY 2010

Claims Held Invalid for Failing to Include the Best Mode Within the Specification

Nutter McClennen & Fish LLP
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Although allegations of a patentee’s failure to disclose the best mode of a claimed invention rarely succeed in rendering asserted claims of a patent invalid, the Federal Circuit recently affirmed in "Ajinomoto Co., Inc. v. International Trade Commission" a determination of invalidity by the U.S. International Trade Commission (ITC) that should alert patent practitioners and inventors of the importance of disclosing the preferred mode of practicing an invention.

United StatesIntellectual Property
Nutter McClennen & Fish LLP'S Intellectual Property Practice Group
Nutter McClennen & Fish LLP'S Intellectual Property Practice Group
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Originally published May 17, 2010

Although allegations of a patentee's failure to disclose the best mode of a claimed invention rarely succeed in rendering asserted claims of a patent invalid, the Federal Circuit recently affirmed in Ajinomoto Co., Inc. v. International Trade Commission a determination of invalidity by the U.S. International Trade Commission (ITC) that should alert patent practitioners and inventors of the importance of disclosing the preferred mode of practicing an invention. In accordance with U.S. patent rules and as highlighted by this case, in drafting a patent application, practitioners should inquire, and inventors should disclose, if there is a preferred embodiment of a claimed invention or any other preferences that materially affect the properties of the invention.

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