How does the best mode requirement affect benefit claims for applications filed before the AIA?
For applications filed before the America Invents Act (AIA), the best mode requirement affects benefit claims by requiring that the prior-filed application disclose the best mode contemplated by the inventor for carrying out the invention. According to MPEP 211.05:
‘The disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.‘
However, it’s important to note that while the best mode requirement is not applied to benefit claims for applications filed on or after September 16, 2012 (the effective date of the AIA), it still applies to applications filed before this date. For pre-AIA applications, failure to disclose the best mode in the prior-filed application could result in the loss of the benefit claim if it is determined that the best mode was not carried forward to the later-filed application.
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