Patent Spec Training Series

Introduction and Writing background section By, Arun K Narasani

Application requirement
 

India Section 7 (chapter 3) US 35 USC 111

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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

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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

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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

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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.

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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.

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Relevant Case Law US

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

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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.

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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

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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.

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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.

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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


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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.

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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.

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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)

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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

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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

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Conclusion
 

Keep background very simple Establish need for invention in a generic sense without characterizing any specific prior art

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Questions?
Contact: Arun K Narasani CEO, Brain League IP Services arun@brainleague.com