Month: February 2013

The Patent Application (Part II) –Background Section

From Denver Patent Attorney Mark Trenner

The Background section of a patent application is intended to give the reader (first, the Patent Office Examiner, then perhaps others who may read your patent application) a general understanding of the technology space of your invention. Unfortunately, I’ve seen many patent applications with Background sections that are overdone.

How can you overdo the Background section of a patent application? Easy – by stating too much. You might be thinking “but if it’s just background, how can that hurt?” It can hurt, because the person writing the Background section may think that everything they are saying is “background” material or “prior art” (that is, already known or in the public domain). But often, the inventor has special knowledge of their field that may not necessarily be known by others. For example, most engineers and scientists read a wide variety of technical articles in their field of study, attend conferences, discuss their technology with other scientists with specialized knowledge. And those engineers and scientists “synthesize” this knowledge. Thus, what may seem known or obvious to an engineer or scientist, may not be generally known by others, perhaps not even by other engineers or scientists. Indeed, it is this synthesis of knowledge that leads to many great inventions.

So what do you include in a Background section of a patent application? As little as possible. Set the stage for your invention, by saying what is indisputably in the public domain and no more. For example, it is generally acceptable to state that computers exist if your invention is related to a computer. But if you say too much in the Background section of your patent application, this may be considered an admission that your invention was already known, or obvious in view of what is commonly known.

As I said in the introduction, it is best to work with a patent attorney when preparing a patent application. And if your patent attorney tells you that “the less said, the better” at least as it applies to the Background section of a patent application, heed their advice.

The Patent Application (Part I) – Introduction

From Denver Patent Attorney Mark Trenner

When you file for a patent for an invention, the Patent Office does not issue a patent immediately. In fact, it can take several  years to have a patent issue. And the Patent Office does not issue patents for all inventions. The invention must be patentable subject matter, and must be unique and non-obvious over prior inventions and other products in the public domain. But this article is not about the patent process, but rather the patent application.

To start the patent process, you must first file a patent application with the Patent Office.

A patent application is a technical document that describes your invention. The patent application includes several parts, that I will attempt to describe in this multi-part series. Keep in mind, however, that you should not attempt to write your own patent application unless you have considerable experience doing so (in which case, you are probably not reading this article).

Patent applications are best written by patent attorneys. Why? Because a patent application is more than just a technical paper that engineers and scientists are comfortable writing. A patent application must meet certain legal requirements in order for the Patent Office to grant a patent. If you get any of these requirements wrong, any patent that issues may not provide sufficient legal protection for your invention. In addition, some deficiencies cannot be corrected after the initial filing of a patent application in the Patent Office.

Instead, this article series is meant as a high-level overview of the patent application, and the different sections of a patent application, so that when you work with a patent attorney and he or she asks you to review a draft of the patent application, you will have a better understanding of what exactly it is you are looking at.