PATENT ATTORNEY – SAMPLE TEMPLATE DRAFT “BACKGROUND:”
[0002] Conventionally, [[insert background of your invention], including high level of overview of the art. This should be around a paragraph]. However, with conventional systems for [your invention category] there is no way of determining [purpose of your invention].
[0003] Accordingly, needs exist for alternative approaches that effectively and efficiently [your invention].
PURPOSE:
MPEP section 608.01(C) discloses that the background of the related art should include references to specific related art and problems involved in the prior art which are solved by the applicant’s invention.
PATENT ATTORNEY – COMMENTS:
1) While drafting US applications, I do not cite specific pieces of prior art. When discussing specific problems or distinguishing features of the prior art, Applicants open themselves up to 1) admitted what the prior art is, and 2) including extra words about how different combinations of the prior art could work, as well as their deficiencies. Specifically, by stating what a piece of prior art includes and does not include in patent applications, the applicant’s interpretation of the cited art will be held as fact when litigated. Because discussing specific references in the background section of a patent application is not required, I do not include this discussion because it will only be limiting to what my client’s invention is.
2) This is because everything that is cited in the backgrounds section of an application is deemed “Applicant Admitted Prior Art.” During prosecution of an application, an Examiner can use any limitations recited in the background as admitted prior art. By writing an unnecessarily long background section, it may be hard to overcome rejections that include applicant admitted prior art.
3) Try to write background sections as short as possible. They only need to be around a paragraph long, giving a very high level overview of the art. If your application is directed towards computer process, just define what a processor is, state the problems (in a sentence) with the art, and state improvement need to be made. It is not required to specifically state the problems with the art (maybe just say they are slow, can’t multi-process tasks, etc.). Additionally, Applicants do not necessarily need to state what their improvements to their field are. Just state that improvements need to be made, and let the rest of the application discuss the improvements.
4) One last time, KEEP AS SHORT AS POSSIBLE.