Background Section of Patent Application


Background Section of 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.

Background Section of Patent Application

According to M.P.E.P. § 608.01(a) and (c), the US Patent and Trademark Office (USPTO) suggests that the following items be included in the Background section:

  • Field of the Invention: A statement of the field of the art to which the invention pertains.
  • Description of the Related Art: Include where appropriate references to specific art or other information.

Although such format is being followed by some patent practitioners, many attorneys shrink away from including such information in the background section. One reason for that there is no benefit for including such information in the said section; and on the contrary including this information may cause the patent office to construe that this information is a part of the prior-art and thus could be used to reject the claims (which most certainly will be related to the disclosed information) under 35 U.S.C. § 103.

Take this example, if the field of the invention has been described very broadly, this can be construed by the Examiner that anything within this broad description is prior-art and thus making the invention (and in turn the claims) obvious. On the other hand, if the field of the invention has been described very narrowly, then the corresponding scope of the claims will be interpreted narrowly.

So it is advised that the “field of invention” could be written as a separate section, preferably above the background section in the patent application; and generally after the “cross-reference” section if included.

In the next article of this series, we will talk about caution that needs to be taken while describing the related art to the present invention, in the background section of the patent application.

Just to refresh, according to M.P.E.P. § 608.01(a) and (c), the US Patent and Trademark Office (USPTO) suggests that the following items be included in the Background section:

  • Field of the Invention: A statement of the field of the art to which the invention pertains.
  • Description of the Related Art: Include where appropriate references to specific art or other information.

Although this is the prescribed format and is being followed by some patent practitioners, many attorneys shrink away from including such information in the background section.

Generally, it is preferred that the related art should not be described in much detail in the background section; or to say in other words, the related art should only be described concisely in the background section. One concern about including many details about the related art is that by try to include more and more details, the writer may run into risk of inaccurately describing the prior-art. This can raise issues during litigation and may greatly hamper the Applicant.

Therefore, unless the description of prior-art in the background section may help in convincing the Examiner for grant of the patent or help a reader to better understand the purpose of the present invention, it is recommended that the prior-art should only be defined very concisely in the background section. By concise, it is meant that the writer should choose to probably only include and if needed re-write the abstract of the prior-art document without adding any personal insights to the same.

Now, we will talk about some general tips about writing the background section.

  • It is crucial to understand that the Background section should not include any admissions that something is a strict prior-art to the present invention, unless there is no possible question about it. Such admission in the background can be used by the Patent Office in rejecting the claims of the application in question.
  • It is preferred that the related art should only be described concisely in the background section. By include extra details about the prior-art, the writer may run into risk of inaccurately describing the prior-art. This can raise issues during litigation and may greatly hamper the Applicant.
  • It is always advised that the background section does not include any criticizing statements or comments about any prior-art document. One problem with criticizing the prior art is that it can affect the claim scope. For example, by making criticizing statements about the prior-art it may be implied that the product or process of the present invention strictly and perfectly overcomes the problems with the prior-art.
  • The background section shall not imply that the present invention provides a “perfect” solution to the given or stated problem. Anything in the present invention which restricts it from achieving the said “perfect” solution may hamper the chance of grant of the present patent application. So in short, making such disparaging statements can only go against the applicant, so it is advised not to take that route.
  • Unless the description of prior-art in the background section may help in convincing the Examiner for grant of the patent or help a reader to better understand the purpose of the present invention, it is recommended that the prior-art should only be defined very concisely in the background section.

Background section is generally considered the place in the patent application where one defines the problem and the prior-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.

Now, we will talk about some more specific tips for writing the background section.

  • It is generally recommended that in some cases (particularly pharmaceutical or chemical cases) the material prior art, including everything identified in the Information Disclosure Statement, be listed in the background section.
  • Also it is sometimes preferred to identify the prior art in the background section so that even if the disclosure of the prior art is somehow missed in the Information Disclosure Statement (IDS), it may not lead to be construed as falsifying or intentionally hiding of the known prior-art, which is a ground of rejection or even revocation of the patent.
  • It is sometimes advised to broadly define at least one particular disadvantage of the prior-art. As discussed earlier, the disadvantage shall be written not in a criticizing manner but rather more generally. The reason for including a disadvantage of the prior-art is that this may help to define the commercial need for the present invention.
  • The problem statement in the background section shall be neither too broad nor too narrow. Including an overly broad problem statement may help to achieve broader claim scope but would also attract more prior-art which could lead to obviousness rejection. On the other hand, as may be understood, including a too narrow problem statement may lead to narrow construction of the claim scope.Download All Free Resources

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