The first section of any patent application comprises of the background. A concise background that adheres to the norms of patent specifications boosts the possibility of a successful patent grant. This article discusses the four best practices that patent practitioners must follow to avoid common mistakes, such as including information that can do more harm than good for an application.

What is a Background in Patent Application?

The background section of a patent application is a part that draws the examiner’s attention towards understanding the shortcomings of the prior-art while not disclosing the invention itself. As mentioned in the Manual of Patent Examining Procedure (608.01(c)), the background may include two parts: Field of the invention and Background of the invention.

Interestingly, these sections are recommended and not mandatory. However, patent practitioners include the background section to provide a broad overview of the art and set a stage for the invention to follow.

The background in a patent specification helps in establishing these patentability criteria of novelty and non-obviousness of the invention by disclosing the prior-art available information, underlying the problems associated with these, and suggesting a solution to these problems through a novel approach. It thereby establishes a clear contrast between the prior existing model and the current invention.

Tips & Tricks for Background Writing

Discussed below are some periphery rules and best practices for writing a decent background and setting the stage to sell an invention by pointing out improvements in the prior-art.

1. Avoid Describing the Prior-Art

It is a basic understanding that the patent application is about the client’s invention and not the prior-art. It is always recommended to explain the prior-art in ambiguous terms discussing the shortcomings of the previous inventions. An explanation about what is lacking is a subtle way of demonstrating the importance of the application and the goals.

Another reason to avoid describing the prior-art is: the more we explain about the prior-art, the easier it becomes for the examiner to issue an ‘obvious rejection’. Anything explained in the prior-art becomes obvious because selecting the options not available in the prior-art is the most logical thing to do.

2. Avoid Discussing the Invention in Background

It has been observed in many patent applications that the practitioners often compare the invention with the prior-art and explain the advantages of the disclosed invention. The best practice is to explain why the invention solves the problem. This can be done by stating other options available to the consumers.

Similarly, the inferior points, missing functionality, and missing parts of the existing solutions can also be explained by asking the client to provide relevant information. Also, client’s input should be supplemented with additional research as they tend to skip the nuances that can have a significant impact on the approval of a patent application.

3. Keep the Background Limited to 100-400 Words

The background of a patent application should be short, to the point, completely self-serving, and should not describe the invention. Also, use of the term “prior-art” is not recommended in the invention. Anything disclosed in the background can be used against the filed patent application during the prosecution and the enforcement of the patent rights. Furthermore, avoid calling any aspect of the invention “simple” or “easy” to avoid any ‘obvious rejection’. Even if any characterization is required, terms such as “elegant” or streamlined” should be preferred.

4. Avoid Giving Information That Can Be Misused

It is always recommended to avoid using any feature that could have a direct or indirect meaning of danger from the product. The danger may be to a person or the environment from the product or the patent application. Such references can be used against the patent application during prosecution or even after the prosecution process. For instance, consider a patent application for a new refrigerator design that does not use any refrigerants for cooling. If an applicant states in the background that, previously, refrigerators used refrigerants that were harmful to the environment, and that the new solution is environment friendly, we concede in the patent application that the previous products or applications were a threat to the environment or humankind.

Conclusion

The background in a patent application should be short and crisp. It’s not a fruitful norm to fill pages after pages describing the history of the invention and prior-art. An applicant must understand the motive of background, which is to explain the need for the invention due to the failure of other innovations to resolve issues.

Sagacious IP offers reliable patent drafting support to boost the patent application for any invention. Our team of highly-skilled patent practitioners is capable of drafting a patent application (flawless) that not just meet the requirement of the patent office concerned but also ensure the broadest possible coverage.

-Yojit Bhugra, Pankaj Garg (Patent Drafting) and the Editorial Team

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