Background section scope

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.

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Patently Confused

Because I work as both a patent practitioner and a software engineer, I subscribe to several email “newsletters” and RSS feeds pertaining to patent news and to general technology.  Over the past few years I have read with some amusement the various news stories pertaining to the purported lunacy of patent protection (particularly so-called “software patents”), providing specific examples.  I would be the first to acknowledge that there are indeed some crazy issued patents out there — one great place to find these is at FreePatentsOnline (link).  Occasionally Gene Quinn, a patent attorney and blogger, writes about examples of humorous patents, such as these here.  Note that none of those listed by Gene in the aforementioned post includes software.

Anyway, the problem with many of the posts by bloggers without a solid knowledge of the patent process is that these posts often include agitating titles that assumedly stir up those with anti-patent bents, but without just cause.  The first and foremost mistake made in these articles is to state that someone has obtained a patent on something seemingly ludicrous, when in fact someone has only applied for a patent, but no patent has yet been granted.  As readers of this article are likely aware, one can file a patent application on anything, whether or not the subject matter is patentable — thus the examination process, wherein a patent examiner skilled in the related art examines patent applications to determine patentability.  For the patent examiner to grant patent protection to an invention, the invention in the associated patent application should, among other things, be directed to patentable subject matter, have utility, be novel, and not be obvious to one skilled in the art.

Another common mistake is to read solely an issued patent’s title and/or abstract to try to glean the scope of the patent’s protection.  Claims define the breadth of the patent’s scope, and can frankly often be difficult to understand by their very nature, usually including esoteric language that takes some effort to fully comprehend.

A less common error is to confuse a patent with a trademark, another form of intellectual property protection.  The genesis of this post was an article I found on Slashdot proclaiming “Town Gets Patent On Being the Center of Europe”.  Of course as soon as I saw that headline, I suspected something was amiss — i.e., how would that be patentable subject matter?!  Apparently the source of Slashdot’s post was a Techdirt post, which does not include such an alarming title: “Patenting The Geophysical Center Of Europe?”.  It would appear that the Techdirt author also harbored some doubts about the legitimacy of this odd event.  I  doubt too many of Slashdot’s readers made it this far (unfortunately), but I was happy to find this retort and adequate analysis by Michael Fötsch: “Patenting The Geophysical Center Of Europe?”.  Mike did his research, and discovered, of course, that the so-called “patent” was actually a trademark for the phrase “Center of Europe”.  As Mike duly notes:

So, what do we learn from this? Not much that we didn’t already know, I’m afraid:

  • Wikipedia contains a lot of dubious information.
  • Twitter is a good place to spread dubious information of all sorts.
  • Politic[i]ans will happily repeat anything they find on Wikipedia.
  • Techdirt isn’t afraid to do the same. But when they do, they add a question mark to the headline to cover their bases. 😉

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Patent Agent Limitations

In general, a registered US Patent Agent (not an attorney) can provide patent services on behalf of a client, where these services pertain to the preparation and prosecution of patent documents with the USPTO.  There are several activities that an agent cannot legally perform, and there are others that most agents are not qualified to do. Some of these activities outside the scope of a typical patent agent are listed below for reference (this list is not meant to be exhaustive).

  • Advising on:
    • freedom to operate/commercialize
    • salability
    • market potential
    • licensing
    • suing
    • infringement
  • Marketing
  • Litigating

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Bilski’s Impact

Peter Zura’s 271 Patent Blog relates an article detailing decisions in the Federal Circuit and in district courts in cases where patents were challenged on meeting the section 101 requirement.  Most of the patents in these cases were found invalid.  Now we wait for the Supreme Court decision on Bilski…

The blog post is available here: [LINK]

How has the CAFC’s Bilski decision impacted your patent/invention analysis and/or drafting?

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Problems with Non Patent Literature

During the patent examination process, I find that examiners rarely use prior art products as references.  Instead the focus is on literature and thus, in the case of products, on product documentation such as user manuals, FAQs, etc.  I find this to be problematic because product documentation does not and cannot cover every subtle aspect of all the features and functions of a given product.  Therefore, reliance on non-patent product literature is covering only a subset of the prior art associated with a given product, whereas the product itself can be used to demonstrate anticipation of claims in a patent application under examination.

There have been occasions when I have been analyzing a given patent and can find a prior art product that seems to anticipate the patent’s claims.  In these cases the product’s literature does not sufficiently describe or demonstrate the functionality covered in the patent while the product itself appears to.

This seems to me to be a fundamental problem with the examination process, and therefore a potential issue with a granted patent’s presumption of validity.  Of course, examiners do not have access to many prior art products, particularly those that are costly, rare, large, etc.  However, when a patent is asserted, the accused party will often go much further than would an examiner in looking not so much for literature as for products to use defensively in order to raise questions of validity.  Certainly one of the first places I look in validity searches is for products, as I know that the examiner has likely not done so.  This is despite 35 USC 102(b) :”A person shall be entitled to a patent unless …the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…”

In fact, disclosure and examination forms such as the USPTO’s Information Disclosure Statement (IDS) (form PTO/SB/08a) (submitted by the patent practitioner) and the Notice of References Cited (form PTO-892) (provided by the examiner) only include table fields explicitly denoted to be used for documents.  How does one then go about citing a product?

What are the readers’ thoughts on the concentrated patent examiner reliance on literature and not on existing products when searching for and analyzing prior art?  And how do practitioners list a product in an IDS?  What do examiners think about this lack of product citation?  Is it indeed an issue?  I look forward to your comments.

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Types of Patent Searches

There are various types of patent searches, with each requiring its own unique search process. Differences between search processes are primarily based on scope and publication dates.  Some different search types are provided below:

A) Patentability: This type of search, normally performed after determining that an invention covers patentable subject matter and has utility, and that its potential return on investment warrants patent pursuance, focuses on finding prior art references that may be relevant to the invention’s novelty and non-obviousness. These prior art references comprise a wide array of materials, such as issued patents, published patent applications, journals and other non-patent literature, etc., and can have been made public at any point prior to the invention’s creation. A patentability search is also sometimes referred to as a “novelty search”, though “patentability search” is a better term because non-obviousness is also an important consideration.

B) Clearance: Also referred to as a “freedom to operate” (FTO) search, a “right to use” search, or an “infringement” search, a clearance search concentrates on uncovering enforceable patents that might act as “roadblocks” to commercialization of a product or service. A clearance search can also be used to uncover pending patent applications that, if eventually issued as patents, might be infringed by a given product or solution.  From 35 USC 154: a patent grant confers “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” “…for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application [or earlier priority application] for the patent was filed in the United States”. After the patent term expires the patent owner no longer has this right. Therefore, a clearance search can be limited in scope to those patent documents that are or may be enforceable when a given product or service is commercialized. Also, note that to remain enforceable throughout the 20 year term, an issued patent must have its maintenance fees paid at the appropriate intervals. Any potentially problematic patent documents can be addressed in a number of ways, including formulating a sufficient and non-infringing workaround, obtaining a license from the patent owner, obtaining an opinion of non-infringement or invalidity from a patent attorney, etc.

C) Validity: This type of search is similar to the patentability search in that part of its scope is to assess novelty and non-obviousness. In this case however, the assessment is made on a patent instead of for an invention. This type of search is often initiated either when a patent owner desires to assess the strength of a given patent in preparation for enforcement of that patent or when an accused infringer wants to ascertain the validity of an asserted patent. Other names for validity searches are “invalidity” search and “enforcement readiness” search.  As with a patentability search, a validity search will include both patent documents and non patent literature.

D) State-of-the-Art: A state-of-the-art search is often executed in order to determine existing solutions and potential competitors within a given technological field. This type of search is sometimes referred to as a “collection” search, and includes not only patent documents but also non patent literature.

E) Mining: A mining search is carried out in order to find and gather related patent assets owned by an entity — mining searches are usually performed for at least one selected technology area. This type of search is often executed on behalf of an entity which owns many patent assets and which may therefore not be fully aware of the scope of their portfolio. The patent assets uncovered in mining searches may then be rated, and these ratings can be leveraged to gather related assets for licensing or divestiture collections, and can also be used for maintenance decisions.

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