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Patent Specification Drafting Series: Background section, By Arun Narasani



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Considerations for writing background section of a patent specification with case law references from US

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Patent Specification Drafting Series: Background section, By Arun Narasani

  1. 1. Patent Spec Training Series Introduction and Writing background section
  2. 2. Application requirement   India – Section 7 (chapter 3) US – 35 USC 111 ipMetrix
  3. 3. Contents of the specification – US       Title of the invention Cross-reference to related applications Statement regarding federally sponsored research or development The names of the parties to a joint research agreement Reference to a "Sequence Listing" Background of the invention         (1) Field of the invention (2) Description of related art including information disclosed under IDS Brief summary of the invention Brief description of the several views of the drawing Detailed description of the invention Claim(s) (commencing on a separate sheet) Abstract of the Disclosure (commencing on a separate sheet) Sequence Listing ipMetrix
  4. 4. Contents of the specification – India          Title Field of the Invention and use of Invention Prior Art and problem to be solved Objects of the Invention Summary of the Invention Detailed Description of Invention Drawings Abstract Claims ipMetrix
  5. 5. Background requirements – US   “The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old.” (37 CFR 1.71) But, no real guideline on what should be or should not be part of the background section ipMetrix
  6. 6. Background requirements – India  “This part should indicate the status of the technology in the field of invention with reference to developments in the field, patents and pending patent applications in the specific art.”  “When the invention relates to an improvement on an existing product or process, a short statement of the closest prior art known to the applicant shall also be given.”  “However, the description should fully and particularly describe the invention, by clearly distinguishing it from such a closest prior art, known to the applicant.” ipMetrix
  7. 7. Background requirements – India  Objects of the invention  “The purpose of this part is to clearly bring out the necessity of the invention. It shall clearly mention the technical problems associated with the existing technology and the solution for that, bringing out the obvious differences between the claimed invention and the prior art.” ipMetrix
  8. 8. Relevant Case Law
  9. 9. KSR v. Teleflex  Facts     Teleflex, Inc. sued KSR International, claiming that one of KSR's products infringed Teleflex's patent[1] on connecting an adjustable vehicle control pedal to an electronic throttle control. KSR argued that the combination of the two elements was obvious, and the claim was therefore not patentable. The district court ruled in favor of KSR The Court of Appeals for the Federal Circuit reversed the decision. The Supreme Court reversed the judgement unanimously ipMetrix
  10. 10. KSR v. Teleflex  Impact on Background   “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.” ipMetrix
  11. 11. Rule 1  Keep description of prior art simple     Avoid characterizing any specific prior art When talking about prior art in general, avoid suggesting that the invention is based on known elements and known functions of such elements When not possible, need to demonstrate unpredictability of the result in the specification Avoid suggesting that the problem is well known in the prior art ipMetrix
  12. 12. In re O’Farrell  Facts    Examiner rejects the claims for “A method for producing a predetermined protein in a stable form in a transformed host species of bacteria” BPAI affirms patent examiner's final rejection of patent application entitled "Method and Hybrid Vector for Regulating Translation of Heterologous DNA in Bacteria.“ The Court of Appeals for the Federal Circuit affirms the decision. ipMetrix
  13. 13. In re O’Farrell  Impact on Background   Obvious-to-try does not mean obviousness Explores the circumstances where it is obvious-to-try but the invention is non-obvious   “In some cases, what would have been "obvious to try" would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful.” “In others, what was "obvious to try" was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” ipMetrix
  14. 14. Rule 2  Do not suggest that the invention is obviousto-try   Avoid characterizing prior arts that provide guidance in the direction of invention For improvement patents, ensure that one of the following is established Invention involves choosing a particular option out of a large set of options that was not suggested by the prior art; and/or  Improvement involves exploration of new technology that was not suggested by the prior art  ipMetrix
  15. 15. Pfizer v. Apotex  Facts    Norvasc is Pfizer's patented blockbuster drug for treating hypertension and angina The trial court upholds Pfizer's patent and issues an injunction stopping Apotex from making a generic version The Court of Appeals for the Federal Circuit invalidates Pfizer's patent, finding it obvious. ipMetrix
  16. 16. Pfizer v. Apotex  Impact on Background  “.. prior art provided not only the means of creating acid addition salts but also predicted the results, which Pfizer merely had to verify through routine testing.” ipMetrix
  17. 17. Rule 3  Do not suggest that the invention is based on routine experimentation based on known elements and known functions (conditions)    Avoid characterization of specific prior art that suggests the elements or predicts the results even in general When not possible, need to establish unpredictability of results Please note that obviousness does not require absolute predictability of success. (In re O’Farrell) ipMetrix
  18. 18. Some pet peeves     Lack of flow of logic from one paragraph to another Informal language Inappropriate sentence formation Inappropriate use of articles ipMetrix
  19. 19. Example  Invention:    Method of organizing data in an enterprise for ease of access Preferred embodiment uses Internet as a means Background    Starts with how Internet has impacted lives How organizations cannot access data without Internet Establishing a need for easy access of data using Internet ipMetrix
  20. 20. The logging server was never introduced before Example  There is no specific data path that you can refer to “Also, rate limiting of the network traffic occurs at the debug logging server level. The logging server has to rate-limit the logs generated by the data path, which will continuously keep on generating logs, hence adversely affecting the performance of the router/switch.” Informal language Complex sentence and no clear articulation ipMetrix
  21. 21. Summary  Avoid content in background that hints that the invention at hand     is based on  Known functions of known elements leading to predictable results Or is based on  Routine finding/experimentation Or is  Obvious-to-try Or  Solves a known problem with generally known elements in the prior art ipMetrix
  22. 22. Summary  Understand the problem that the invention is trying to solve    Not enough to understand the preferred embodiment Avoid talking about specific embodiment details in background; focus on the larger problem Follow basic writing rules    Plan for the flow of logic before writing Ensure that there is flow of logic from one para to another Follow basic grammar rules and usage of proper articles ipMetrix
  23. 23. Conclusion   Keep background very simple Establish need for invention in a generic sense without characterizing any specific prior art ipMetrix
  24. 24. Questions? Contact: Arun Narasani Founder, ipMetrix arun@ipmetrix.com