{"id":19982,"date":"2011-10-23T15:58:29","date_gmt":"2011-10-23T19:58:29","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=19982"},"modified":"2013-07-30T21:07:32","modified_gmt":"2013-07-31T01:07:32","slug":"beware-background-pitfalls-when-preparing-a-patent-application","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2011\/10\/23\/beware-background-pitfalls-when-preparing-a-patent-application\/id=19982\/","title":{"rendered":"Beware Background Pitfalls When Preparing a Patent Application"},"content":{"rendered":"
Periodically I write articles aimed at giving inventors some information about preparing a patent application, such as primers on writing patent claims<\/strong><\/a>, writing method claims<\/strong><\/a>, describing your invention completely<\/strong><\/a> and language difficulties<\/strong><\/a>, to name but a few.\u00a0 Every time I do this I cringe a little out of fear that inventors will get the wrong idea.\u00a0 For the typical inventor who might have several inventions over the course of a lifetime.\u00a0 This level of experience makes it unrealistic to believe you can do it yourself without any assistance and do it just as well as a patent attorney or patent agent would or could.<\/p>\n I like drawing an analogy to the commercial where the man is sitting at the table with a butter knife and the surgeon on the phone is telling him how to perform the surgery.\u00a0 He asks: “Shouldn’t you be doing this?”\u00a0 A wise question for sure!\u00a0 Preparing a patent application on your own is a lot like doing surgery on yourself.\u00a0 You are going to make mistakes, it is not a good idea and only in the most extreme of circumstances should it be attempted.<\/p>\n Having said this, if you have no other choice \u2014 for whatever reason \u2014 you should be armed with the best information you can obtain.\u00a0 For that reason I write these articles, and I also write because I am convinced that the more you know the better you will be as an inventor.\u00a0 So even if you never plan on representing yourself if you understand the common mistakes and likely pitfalls it will make you a better consumer of legal services, and it will make you a better inventor because you will learn what is important and why, thereby giving your patent attorney or patent agent far more useful information than you otherwise would.<\/p>\n <\/p>\n [Invent-Patent]<\/p>\n Without further ado, here are some pitfalls to be on the lookout for when you are preparing the Background of the Invention<\/em>.<\/p>\n 1. Don’t Describe the Prior Art<\/strong><\/p>\n When describing what is commonly referred to as the prior art you should, as a general rule, stay away from describing what the prior art is or does.\u00a0 This is a fairly common mistake that many inventors make, and a mistake that some inventor books and advocates actually encourage.\u00a0 It is certainly fine to discuss the prior art, and in fact many inventors will find it useful to discuss deficiencies in the prior art.\u00a0 However, as with many things, there is a right way to talk about the prior art and many wrong ways to talk about the prior art.<\/p>\n The concern centers on what is called an admission.\u00a0 If you talk about what the prior art does, if and when it is necessary to engage in patent prosecution with the patent examiner, you may find it exceptionally difficult to back away from positive, descriptive statements that have previously been made.\u00a0 For this reason, I suggest that you not describe what the prior art is or does, just explain what it is lacking.\u00a0 Explaining what it is lacking will in a subtle way demonstrates the importance of your invention, which is the goal.\u00a0 Your patent application is about YOUR invention, not the prior art.<\/p>\n The other concern here is that the more you explain about the prior art the more likely you will be making it easy for the patent examiner to issue an obviousness rejection.\u00a0 Obviousness is not supposed to be a hindsight inquiry because, after all, everything is obvious in hindsight once it has been explained.\u00a0 It would, however, be naive not to notice that over the last 5 years the law of obviousness has been trending toward an inquiry that allows a decision maker, such as a patent examiner, to employ some hindsight.\u00a0 If you explain the prior art and the problems too well then your solution, and hence your invention, could seem obvious.\u00a0 So you must tread lightly. Less is more when you are discussing the prior art.<\/p>\n 2. Invention Compared with Prior Art<\/strong><\/p>\n There is a great tendency among inventors to want to compare their invention directly with the prior art that they know about.\u00a0 This is a huge mistake.\u00a0 You want to say as little as possible about the prior art, as discussed above.\u00a0 Sure, you want to know what else is out there and you absolutely should describe your invention to accentuate the positive and likely patentable aspects, but direct comparisons with the prior art are full of danger.<\/p>\n The best thing to do is explain why your invention solves problems and\/or is important for the relevant consumer audience.\u00a0 In order to accomplish this you do not explain what else available to consumers and why it is inferior, missing functionality or missing parts.\u00a0 Remember, the focus of the application MUST be on your invention.\u00a0 It can be extremely helpful to create a comparison chart or write text comparing the prior art you know about with your invention, but this should be used by you or provided to your patent attorney or agent.\u00a0 It will be exceptionally helpful to have this information, and I ask my clients to provide it to me whenever they are willing to be so involved.\u00a0 This information informs how you describe the invention, and will be helpful later during prosecution, but it is not appropriate in a patent application.<\/p>\n