The background section of a patent application is supposed to describe the current state of the art. The background section might describe the problem associated with the current technology. For example, the current technology is too slow, too expensive, not easy to use. Your invention might solve one or more of the problems. The best way to write up the background of the invention section of a patent application is to be short and brief. Anything that you say can and will be used against you when you enforce your patent.
To illustrate, Leo Pharamaceutical Products, LTD v. PTO (Fed. Cir. August 12, 2013) involved a patent directed to a new composition of vitamin D and corticosteroids which is storage stable. The prior art (i.e., current state of the art) did disclose compositions containing both vitamin D and corticosteroids but these prior art compositions were not storage stable. The components of the composition were not capable of being effective during a normal shelf life for a drug. To obtain a storage stable composition, the inventors added a particular solvent to increase the stability of vitamin D and corticosteroids so that the composition would be storage stable.
The examiner on the case indicated that the composition of a vitamin D, corticosteroids and a solvent which is storage stable is an obvious variant compared to the prior art. There were many prior art references disclosing the combination of vitamin D and corticosteroids. And, it would have been obvious to a skilled person to add the solvent for storage stability.
Sounds like a difficult case. However, the inventors appealed the case from the examiner to the Board of Patent Appeals and Interferences. During the appeal, the inventors showed that the prior art either discouraged combining vitamin D and corticosteroids in a single formulation or attempted the combination without recognizing or solving the storage stability problems associated with combining the two. These are good arguments to show that the prior art teaches away from solving the storage stability problem. If the patentees had included an extensive background describing the problems with storage stability, then these winner arguments would not have been available. The background would have been said to admit to the recognition of the storage stability problem.
If you write an extensive background of the invention, then you might include something that can and will be used against you. Remember, you can always teach the examiner about the prior art through an information disclosure statement and/or by explaining the prior art in a separate document.
Here are some relevant quotes from the case:
“The inventors of the ‘013 patent recognized and solved a problem with the storage stability of certain formulations – a problem that the prior art did not recognize and a problem that was not solved for over a decade.
As an initial matter, an invention can often be the recognition of the problem itself.” (emphasis added).
A short generic description of the prior art in the background section is generally the best approach. For patent applications that I write, the backgrounds are typically about 5-10 sentences long. They are generic at best and do not get into the specific problems that the invention solves.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected] Please feel free to forward this article to your friends. As an Orange County Patent Lawyer, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.