Beware of the Background Section in a Patent Application
July 7th, 2020
What Is Background?
The Background section of a patent application should be short and to the point. Anything that you say in the Background can and will be used against you when you prosecute or enforce your patent. The Manual of Patent Examination and Procedure recommends that you break it up into two discrete sections: 1. Field of Use Statement, and 2. Background of the Prior Art. Remembering that Background is not mandatory should frame your strategy in drawing up these sections, should you choose to do so. Your goal is not to be as thorough as possible, but to maintain the focus of the application on the invention at issue. The Background should simply show why the applicant’s patent fills a need. Therefore, the Background should be kept brief and written strategically to increase the likelihood that the patent will be granted.
Keep the Right Goal in Mind
Your goal in the Background section is to focus the Examiner’s understanding of the shortcomings of the prior art while NOT disclosing your invention. You are looking to point out some of the shortcomings of the prior art, NOT how the shortcomings have been solved by your invention. Nor do you want to express a motivation for combining prior art elements that could be used by the Examiner to support an obviousness rejection. When in doubt, put it in the Detailed Description rather than the Background.
Think of the Background as setting the stage to later be able to “Sell” your invention in the Detailed Description by pointing out how the invention is an improvement over the prior art.
Keep the focus on the applicant’s invention. You can talk about improving some aspect of the state of the art, but do not mention or describe the prior art itself in detail. Describe how the invention is missing from the prior art without going into detail about what the prior art contains.
Field of the Invention
The Background section begins with a general statement about the field of the invention, followed by a slightly more specific statement of the field of the invention.
You are not disclosing how your invention really works, just the general field. This data is often used by the Patent Office to classify your invention.
Remember Your Goal
In the Background, you are setting the stage to sell your invention. Discuss the prior art and the elements or functionality that are really a problem, but don’t point out how your invention solves them. In discussing the prior art, talk about why the identified differences are ineffective, or less than optimal. This helps set the stage for you to talk about the benefits of your invention later in the Detailed Description.
Separate Out Unnecessary or Potentially Harmful Information
Having in-depth information comparing the prior art against the new invention is great to have as a personal reference to keep on hand only. Knowing what the landscape looks like is beneficial to the applicant, but it does not need to be in the Background section. The patent application is not a research paper; think of it instead as a persuasive, one-sided argument to grant you rights.
If you are planning a business or business transaction involving the invention, one would keep the business plan separately. Similarly, keeping a lab notebook is useful as a separate record. A lab notebook records the details of invention development, and these can be helpful in both protecting and explaining your invention.
People often make the mistake of going into great detail about the prior art and the invention itself in the Background. Remember, however, that everything you state in the Background section could be used against you if you need to enforce your patent. Limit the Background section to a few general sentences that are self-serving. Then, focus instead on describing the invention with detail in the Detailed Description section. This is where most of the information about the invention should reside.
… And Background Don’ts
The term Background is misleading. It is not helpful to include a detailed, comprehensive history of what came before the applicant’s invention and the state of the prior art. In fact, this could be damaging. Including extensive detail and labelling what came before as prior art can be taken as an admission, regardless of any disclaimers made.
Remember that everything recited in the Background section may be assumed to be acknowledged prior art. Consequently, no part of your invention should be recited in the Background section. The Patent Office has been known to reject applicants based on what is stated in the Background section.
KSR v. Teleflex: Prior Art Elements and Obviousness
KSR v. Teleflex is an important case with regard to the standard of obviousness, but it also has an impact on how we draft the Background section. In this case, Teleflex claimed that KSR infringed its patent on connecting an adjustable vehicle control pedal to an electronic throttle control. KSR argued that combining those two elements was obvious and therefore it could not be patentable. The case went up to the United States Supreme Court, which sided with KSR. The Supreme Court stated that the threshold question was whether or not a person having ordinary skill in the art, here a pedal designer, “facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading [a prior art patent] with a sensor.” The combination of prior art elements here was deemed to be obvious.
KSR’s Impact on Background
Before the KSR case, it was customary in the Background to recite what would be desirable by the industry in terms of “remedying the shortcomings” of the prior art. This was really a recitation of the advantages of your invention in disguise in an attempt to sell the invention.
However, the recitation of what would be desirable is now viewed as a little too close to a statement of motivation to combine elements, so the practice has been discontinued.
Therefore, we especially want to be careful with anything that the Examiner could point to as a motivation to combine the prior art elements.
Writing up the Background seems at first glance to be one of the easiest and most inconsequential sections. As we have discussed, however, statements made about the prior art in the Background can have serious consequences. Great care and thought should be put into which brief statements to include that could help your application. Obtaining the assistance of an experienced patent attorney will help you in crafting a patent application that works for you, not against you.