Your Invention in Words –

A patent application is, simply put, your invention in words. While the patent application describes your invention in detail, it should also describe what makes your invention different than anything else that has been done before.  A compelling patent application that is more likely to make it through the long and arduous pathway known as prosecution includes a description of the background of well traveled paths that others have taken to unsuccessfully solve a certain problem followed by a detailed description of the new invention and how it solves problems that others were not able to solve in the past.   An over-zealous patent drafter that describes your invention dozens of different ways and with numerous embodiments usually creates value in your patent application.  BUT, should that same zealousness prevail in drafting the background section of your patent application, problems could be lurking in the shrubbery¹.

Background of the Invention and the Forbidden Donut

A patent application is arranged in sections, as set forth in 37 CFR §1.77.   The “Background of the Invention” section should set forth background information leading up to your invention including a discussion of the related art known to the Applicant, any references to specific related art and problems that are solved by the Applicant’s invention².   Related art may also be called “Background Art”, but should never be called Prior Art.

“What you say can and will be used against you.”

Over the years, and with a good number of court decisions helping to create such a taboo, the term Prior Art has evolved into a forbidden term when it comes to writing patent applications. The courts have decided that if an Applicant refers to something as “Prior Art” in their patent application, it is just that³, an admission by the Applicant. An admission in a patent application that something is prior art makes it available as prior art against the claims.  Admitted prior art can, and oftentimes is, used by patent examiners in claim rejections. It is far easier for an examiner to use prior art that has been admitted on the record by that over-zealous patent drafter rather than conduct a search for an applicable reference. Suffice it to say referring to another invention in a patent application as “Prior Art” should be painstakingly avoided, like Homer’s forbidden donut.

Patent Drawings Labeled as Prior Art

In years past, many patent applications contained one or more figures that were labeled as “Prior Art”. The rationale to do so was that it was easy to compare the old prior art with the new and novel invention that was also depicted in the figures and reach the conclusion that the invention was novel.  However, as court decisions related to the interpretation of prior art began to mold and shape patent preparation and prosecution, this practice was quickly dropped.  The old saying that “a picture is worth a thousand words” became very relevant, as there were now a thousand more words for an Examiner to misinterpret or mischaracterize and thus reject on.

The Duty to Disclose⁴

Avoiding use of the term Prior Art is sound practice when drafting a patent application, and avoiding references to specific prior inventions, even if they are not specifically called Prior Art, should be standard practice when drafting a patent application. Of course there are exceptions, but most patent practitioners will eliminate references to other patents and inventions (patented or not) in their patent applications, and some even go so far as to keep the background section of the patent application terse and devoid of all references to previous inventions.  While limiting or eliminating references to previous inventions in a patent application may be good practice to avoid an “Applicants Admitted Prior Art (AAPA)” based rejection, there still remains a responsibility to disclose to the United States Patent Office information that is considered “material to patentability.”  Each individual associated with the filing and prosecution of a patent application has this duty of candor, as defined by 37 CFR 1.56. These individuals are defined as a) each inventor named in the application; b) each agent or attorney who prepares or prosecutes the application; and c) every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, assignee, or anyone to whom there is an obligation to assign the application.  Information is considered “material to patentability” when it a) it establishes by itself or in combination with other information a prima facie case of unpatentability of a claim in the application, or b) it refutes or is inconsistent with a position the applicant takes in asserting an argument of patentability, or opposing an argument of unpatentability relied on by the Office. Fulfilling this obligation normally involves providing all references that are material to patentability in an Information Disclosure Statement and filing it with the USPTO.

Taking Care When Drafting the Background Section

There is no legal requirement to mention or describe prior art in the Background Section of a patent application. Thus it is best to avoid doing so and eliminate the possibility of rejections based on AAPA.  Even if the term prior art is not explicitly used in a patent application, referring to something as “commonly known,” “traditional,” “conventional,” or “commonly known in the industry” are examples of terms that could be considered admitted prior art by an Examiner, and should also be avoided.

Consider instead preparing a brief background of the invention section in your next patent application with no specific mention of the inventions of others. You can describe in general terms the current state of technology related to your invention, or perhaps give a historical account of the invention of the first widget, which is in no way related to your new high tech smart widget or your iWidget with fragile touch screen display. You could also describe the current market for your invention, or how things are done manually, with the world just waiting for your smart widget to be released. There are many ways to provide a meaningful background section in your patent application that expounds on the unmet need that your invention addresses without creating admitted prior art that may well be used against the claimed patentability of your invention. A careless choice of words can create endless headaches in prosecution.  A seasoned patent practitioner can draft a patent application using techniques that won’t necessarily guarantee a patent, but can certainly increase the odds for success.

1. The knights who say ‘Ni.” Monty Python and The Holy Grail.
2. MPEP §608.01(a).
3. See for example In re Nomiya, 509 F.2d 566, 184 USPQ 607, 610 (CCPA 1975).
4. See The Limited Monopoly, December 2006.

PHOTO CREDIT: Cayman Islands road sign.  R. Gunderman.

Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers.  Copyright 2016 Robert Gunderman, Jr. and John Hammond.

Note: This short article is intended only to provide cursory background information, and is not intended to be legal advice.  No client relationship with the authors is in any way established by this article.

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