Home > Patent Drafting > Background section scope

Background section scope

November 30, 2010

I am of the opinion that at least in the US, it is good practice to minimize the amount of information provided in the Background section of a patent application.

I prefer to not include a statement pertaining to the field of the art to which the invention pertains, because if described overly broadly, the scope can be interpreted to include more art than is actually applicable, thereby opening the patent application to obviousness rejections.  If the field of the invention is described unduly narrowly, then the associated claims may be interpreted too narrowly.

Additionally, I prefer to not describe any related art in the Background section, but instead only refer to any related references in the Information Disclosure Statement (IDS).  It seems, again, at least in the US, that describing any related art can get the applicant into trouble.  While I will sometimes list references, I recognize the risk of describing the contents of a reference in that the description may misrepresent the scope of the reference, potentially leading to accusations of intentionally misleading the examiner.  Therefore, I often describe the prior art in general terms, without explicitly delineating related art references.

Of course there are situations in which I will provide more information in the Background section if I believe it is warranted.

It is my understanding that in some countries it is necessary to include prior art references in the Background section in response to an examiner request, and this can still be done in a revised Background section that was originally relatively short.

I believe it is common convention nowadays amongst patent practitioners to minimize the content of the Background section in US patent applications.  What are the readers’ experiences and opinions?  Please provide your feedback in the Comments section.

Bookmark and Share

%d bloggers like this: