Here's an interesting case just decided. Thanks to one of the readers for sending it in. Greg Aharonian Internet Patent News Service ==================== Time to Rejoice: Transco is Overturned By the Federal Circuit On September 14, 1994, the Federal Circuit handed down its opinion on Transco Products Inc. v. Performance Contracting, Inc. The unanimous three judge panel, speaking through Judge Rich, overturned the Illinois District Court's earlier summary judgment decision that required patent applicants to update their "best mode" disclosures upon filing continuation applications. A second issue concerning the failure of the patentee to provide supplier/trade name information for material contained within the claims and the specification was vacated. The district court had improperly used summary judgment, and this issue was remanded for further proceedings as per the current decision. The Court followed a previous decision that had held that the filing date of the original application is the correct time to comply with the best mode requirement of 35 USC 112. Dow Chemical Co. v. American Cyanamid Co., 615 F.Supp. 471, 482, 229 USPQ 171, 179 (E.D. La. 1985), aff'd,816 F. 2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987), cert. denied, 484 U.S. 849 (1987). Judge Rich explained that to demand that the PTO receive an updated best mode disclosure in all continuing applications would "subvert the patent system's goal of promoting the useful arts through encouraging early disclosure...If [the patentee] later developed better modes for practicing an invention adequately disclosed in an earlier filed application, he would nonetheless have to redraft his disclosure to add these later-developments upon filing a continuing application." The Court further pointed out that the District Court's decision would result in a policy that was completely contrary to the current prosecution process and would cause unfair hardship to patent law practitioners who would have to consult with their inventors every time they filed a continuing application. This would be true even when the filing were done solely at the PTO's discretion and solely for an Examiner's convenience. Therefore patent practitioners may now rejoice. The relevant date for evaluating a best mode disclosure is the date of the parent application. The district court's Transco ruling has been overturned. --Michael D. Davis, Ph.D., J.D. Elman Wilf & Fried Media, Pennsylvania