When you hear about patent strategy, you probably think about what to file a patent on. But there is a ton of strategy that is involved in drafting a patent application. Particularly, there is quite a bit of strategy that does into drafting the background and summary sections of a patent application. These sections can make or break a patent application, and can be the difference between a patent that is allowable (or not), and a patent that can obtain a favorable jury verdict (or not).
The Law
There isn't a ton guidance on this topic because the legal requirements are quite simple. Patent Guidelines in MPEP Section 608(c) provides that the background section should include a description of information disclosed in an IDS under 37 CFR 1.97 and 37 CFR 1.98. Additionally, applicants are asked to describe the state of the prior art or other information disclosed known to the applicant, including references to specific prior art or other information where appropriate. Where applicable, the problems involved in the prior art or other information disclosed which are solved by the applicant’s invention should be indicated (See also MPEP § 608.01(a), § 608.01(p) and § 707.05(b)).
Surprisingly, there is no requirement to include a Summary Section (note, a Brief Summary of the Invention is required under MPEP 608.01(d), but that is usually just a sentence or two, and that is not what we are talking about here).
Additionally, there are legal rules that provide that anything provided in the background section is applicant admitted prior art. And such an admission can be used to deny a patent grant. As such, a lot of applicants and patent practitioners say as little as possible because (1) there is not that is legally required, and (2) because it could, in fact, be used against you.
Common Practice
Background Section
Many attorneys advocate for writing something short and simple that discusses the field of the invention, the problem, and the need for improvement. Many attorneys note that anything in this background section can be used against you so it should be three short sentences. Here is an example of how most people approach a background section. This example deals with a new type of tripod.
Field of invention: “The various aspects discussed herein relate to a tripod”
Problem: “Tripods are used to support a camera. However, there are problems with existing tripods”
Need for improvement: “Accordingly, there is a need in the art for an improved tripod
Here you can see that this background section is extremely brief. What can you gain from reading this section as an objective outsider? All this background accomplishes is to establish that a new tripod solves some problem because it should be solved. This doesn’t describe what the problems are, why they should be fixed, or how they will be fixed. There’s not really much to be gained from writing this section like this. We’ll go over another approach later that can be more effective.
Take a look at some more examples of this approach to background section writing that have similar problems here, here, and here.
Summary Section
Here is an example of how most people approach a summary section. This example sets up its summary as a paraphrased version of the claims section of the patent application.
“In an aspect described herein, a tripod for supporting a camera is disclosed. The tripod may have legs, a ball head, a spring, and a button. With respect to the ball head, the legs may be pivotally attached to the ball head. The button may be spring biased outward with the spring. The button may also be operative to apply a friction force to a ball of the ball head to set an angular position of the ball head.”
Let’s examine this again as an objective outsider. You see this general statement of what the invention is that you will later see in detail in the specification section.
This is a perfectly safe and reasonable approach. It won’t get you in trouble and avoids many of the pitfalls associated with long, meandering background and summary sections. This is fine but again, you can really get more out of this section if you use a different approach. More on that later.
Take a look here to find another example of this type of approach to summary section writing.
Missed Opportunity
Why have the writers of this imaginary patent chosen to go this route? It’s the safe approach. Background and summary sections, as mentioned before, can be considered prior art or reference prior art that can be used against you. However, there’s a key lost opportunity to use these sections strategically in the case of patent litigation down the line. We’ll talk about what you could gain by strategically crafting background and summary sections later. First, let’s talk about an example scenario of how background and summary sections can affect you substantially.
But we think this type of safe writing is a missed opportunity. The background and summary sections are most often the most read–and the most well-understood–parts of a patent application. We think of it as an opportunity to set the stage for your patent application. It is a way to be impactful and to forcefully communicate the inventive, novel, and non-obvious aspects of your invention. It is often an opportunity that you get in no other part of the patent document.
It is a significant missed opportunity in patent litigation, and in level-setting expectations when working with inventors, as we explain below.
Patent Litigation
The worst-case scenario for any patent holder is the time when the patent goes to trial. It’s important to think about this scenario when writing your patent in the first place.
The jury is presented with many pieces of evidence about a patent at hand when it goes to trial it's a lot to keep track of, even for experienced litigators, much less someone who may never have been exposed to commercial litigation. For example, in an average patent trial, each side will introduce 300 pieces of evidence, for a grand total of 600 (if not more). Many of these documents are 100+ pages in length and often quite dense. These pieces of evidence can include complicated accounts of the prior art, expert reports, contract disputes, and other complex legal minutiae that are really only understood by those trained to understand them. The average person on a jury doesn’t know what to make of all of this.
The jury cannot bring any of these pieces of evidence back with them to their room during deliberations, but they can bring the actual patent in its entirety. A jury member without legal training tends to focus just on the background and summary sections because they are the broadest and easiest to understand sections. If this is a section that most jury members focus on, why is the general school of thought to think of these sections as throwaways? This is where our unique school of thought comes into play.
Our Approach to Background & Summary Sections
Our approach is to lay out the problems that the patent is supposed to solve in the background and then address how the invention solves those problems one by one in the summary. This is the opportunity to win over the hearts and minds of the jury by simply framing the discussion for the jury based on problems and solutions to problems. By giving the jury something to walk away with that sticks in their minds, the rest of the case is put into perspective in your favor. This approach also has some non-litigation benefits as well.
To the patent examiner, structuring the background and summary this way frames the eligibility of the invention in the best light. For clients during the discussion, this simple way of laying out the invention’s usefulness in solving particular problems allows lawyers and clients to be on the same level playing field when discussing the invention.
Added Benefit
Improved Communication With Inventors
Lawyers are able to talk to clients in the same general language which can result in better communication between both parties and better communication of the invention to the patent examiner. Lawyers and inventors are sometimes on different wavelengths and can have a hard time communicating with each other about an invention during the patent process. There might be some complicated legal concept to convey to the inventor while there also might be a complicated concept about the invention that is equally difficult to convey just the same. By structuring the background and summary this way, it forces the inventor and lawyer to speak in general terms so that it can be communicated to a general audience (ie. The patent examiner and potentially a jury). The inventor and the attorney can understand each other and the jury can too. Everyone wins.
Is it dangerous?
But isn’t it dangerous to elaborate in the background and summary sections?
You might think that making the background and summary comprehensive might leave you open to more scrutiny during a trial or a patent evaluation but this really is not all that likely. Our approach involves describing the deficiencies of the prior art that your invention aims to fix. There is not really much of a chance that this could hurt your patent allowance. It can actually prove your case even stronger if these sections are effectively written.
By now it should be evident that background and summary sections can do more for you than it can hurt. Following our advice about how to write these sections can give you an edge in certain circumstances which could possibly mean a difference in the long run.