How does the best mode requirement affect continuation applications?

The best mode requirement’s impact on continuation applications has been modified by the America Invents Act (AIA). According to MPEP 2165:

1. Pre-AIA, the best mode had to be disclosed in the earlier-filed application for the continuation to claim its benefit date.
2. Post-AIA, the best mode requirement is no longer a condition for receiving the benefit of an earlier filing date.

The MPEP states:

“Section 15 of the Leahy-Smith America Invents Act also amended 35 U.S.C. 119(e) and 120 to modify this requirement such that the disclosure in the earlier filed application must be made in the manner provided by pre-AIA 35 U.S.C. 112, first paragraph, ‘other than the requirement to disclose the best mode.’“

This change means that:

• Continuation applications can now claim the benefit of an earlier filing date even if the best mode was not disclosed in the parent application.
• However, the best mode requirement still applies to the continuation application itself at its own filing date.
• Examiners generally don’t need to determine if the earlier-filed application complies with the best mode requirement unless the earlier filing date is necessary (e.g., to overcome a reference).

While this change provides some flexibility for applicants, it’s still advisable to disclose the best mode in all applications to ensure full compliance with patent laws.

To learn more:

• best mode requirement
• continuation applications
• America Invents Act
• patent priority