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Issue 5 | November 7, 2001
Use Provisional Patent Applications For Best
Mode Compliance


It is often quite difficult to determine whether, or how much of, a computer program listing (or other potential trade secret) should be disclosed in a patent application in order to set forth the "best mode" contemplated by the inventor for carrying out the invention. A better approach is to consider how to disclose as much as possible without incurring significant additional commercial risk.

While U.S. law now provides for most patent applications to be published eighteen months from their earliest filing date, patent practitioners still have quite a bit of latitude with regard to how that information is presented to the public. In contrast to utility patent applications, provisional applications are merely made available for public inspection and photocopying at the Public Search Room in Arlington, Virginia. In addition, there are no formatting requirements for lengthy software listings that are filed with provisional applications.

Consequently, a paper copy of a computer program listing (or other commercially-sensitive information) can be filed with a relatively inexpensive provisional application and then incorporated by reference into a corresponding utility application filed one year later. The provisional application containing the code will then be merely laid-open for inspection eighteen months after filing, and the utility application will be formally published without the code. If a best mode or enablement challenge is raised by a Patent Examiner or an accused infringer, then a good argument can be made that both disclosure requirements were met by the provisional application whose benefits accrue to the utility application that was published without the code.

Of course, submitting a copy of the program listing with only the provisional application still presents some risk. For example, from a legal perspective, this approach is still untested before the U.S. Patent Office and the courts. More importantly, from a commercial perspective, a software pirate with a scanner and a good optical character recognition ("OCR") system might be still able to convert the paper images into a set of executable instructions fairly easily.

However, any such OCR-based pirating attempts can be foiled by creating a watermark on each page of the program listing. For example, the standard copyright notice, "© [Year of First Publication] [Owner's Name]" can be arranged in a large, grayscaled font, diagonally across each page, so that the code can be seen through the watermark. Such notice would then subject infringing copiers to liability for statutory copyright damages in addition to any provisional remedies for patent infringement.

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this e-mail is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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