Role of Background Section in Patent Application

Role of Background Section in Patent Application : Background section is generally considered the place in the patent application where one defines the problem and the prior-art. Although such function of the background section is commonly accepted, it is advisable that the one must be very careful what to disclose and what not to disclose in the background section.

Role of Background Section in Patent Application

One purpose of the background section is to show that there is a need of the invention in the art. Many attorneys prefer that the background section shall be written in a manner to provide a sales pitch of the invention. Once a reader goes through the background section, he/she should feel that there is a problem that needs attention and effort to be solved. Then, the background section should portray the need to solve that problem. For example, a patent application for an invention related to man-made fuel from plastic bags can include one or two statements to explain the consequences of extracting natural fuels and how the use of such fuels adds carbon to the atmosphere, leading to climate change, etc.

Some attorneys suggest to not over emphasize anything in the background section, and that too has valid reasons. Anything under the background section will be considered as self-admitted prior-art to the invention. One must be careful that the background section should not include anything that can be used against the applicant to consider the present invention as obvious. For example, the writer must be careful to not write the problem statement such that it seems obvious in the art, and thereby its solution (i.e., the present invention) may be construed obvious and thus not eligible for grant of a patent.

It may be understood that the background section kind of acts like a benchmark for deciding an appropriate scope of the claims for the invention. Overstating the prior-art in the background section may lead to narrow claims which may hamper the chances of the inventor to force out the infringers, and understating may lead to overly broad claims which may be rejected by the patent office during prosecution.