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: Just a Patent Examiner

Background of the Invention (or lack thereof): Rule 56 Implications?

A few weeks back I spoke about some attorneys' tendency to draft their applications in such a way that it seems as if they are trying to 'hide the invention' from the examiner.

Why would they try to do that??

Well, there are, obviously, reasons why doing just that is in the attorneys' and the inventors' best interests, even if it makes life tough on the examiner who has to cope with it.

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For instance, a while back I read about the 'Low Profile-Common Denominator' theory of patent drafting. (I'd link to the document, but the page I printed back then is no longer posted on the Internet.)

The strategy is meant to 'maximize the chances that issued patents resulting from LP-CD drafted applications will be held valid (and literally infringed) by the courts'.

The 'Low Profile' part of this strategy is to minimize the communication with the PTO during prosecution.

Some of the tidbits of advice...

"Federal Circuit cases have established the need to avoid in prosecution stating anything about the claimed invention, if possible."

"With respect to the specification, LP means writing nothing about the invention other than its technical specification. Everything else can and will be used against the applicant, not necessarily by the USPTO, but definitely by the Federal Circuit."

[There's obviously a whole lot more to this strategy, but these seem to be the high points that will most affect an examiner's ability to examine such an application. The document I cite came from the Patent Resources Group website.]

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There was also lots of talk after the KSR decision was handed down that prosecutors should stop making any statements about 'long felt need', because examiners (or the courts?) could use such statements as motivation to combine prior art references. Some suggested simply leaving out the entire background section.

Other attorneys have talked about the 'storytelling' they used to do in the drafting of specifications, storytelling that they dare no longer do in light of the decisions being handed down by the courts these days.

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I probably don't have to tell you that these kinds of patent drafting strategies will make examination tougher.

It is incredibly helpful to an examiner if there is a nice background of the invention included, and very helpful when it cites some prior art references. Placing the invention in context within the art in which it belongs almost always makes the examiner's search a whole heck of a lot easier.

Many art units within the Office span such a broad area of art that an examiner simply cannot be an expert in all (or even most) of the subject areas that they see in the applications they examine. [Doing a little reclassification within the Office would help with this problem.] This is why the detail and quality of the background can make such a huge difference in the examiner's ability to perform a good search and examination in the amount of time allocated to them.

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I've been wondering about this, though. Isn't this whole 'minimalist' drafting strategy somewhat at odds with the provisions of rule 56?

MPEP § 608.01(c) says that the Background of the Invention comprises the field of the invention, and a description of the related art, including a paragraph describing the state of the prior art known to the applicant, including references to specific prior art or other information where appropriate.

CFR § 1.56 says that applicants have the duty to disclose to the Office all information known to be material to patentability.

Now, if an applicant is worried about what they disclose in the Background of the Invention (because that information might have implications in the case of litigation, or because an examiner might use that disclosed prior art in a rejection), then how can information that the inventor might disclose in the Background not be material to patentability?

Of course, I don't have that 'Esq.' after my name, so maybe it's to be expected, but I'm just not sure what it is exactly that distinguishes between withholding information that would (should?) go in the Background and withholding information in that impermissible rule 56 way.

I know that 37 CFR § 1.77 says that the specification should include the following sections (one of which is the Background), which I suppose is different than saying it shall include them. However, it says that the background 'should' be included, if applicable, and certainly, the inventor can reasonably be expected to know about the state of the prior art for their own invention, so it's not as if they can plead ignorance...can they? When is it reasonable to say that the invention is so revolutionary that the background section of the specification is not applicable?

There just seems to be a glaring inconsistency when on one hand some applicants/attorneys are so paranoid that they are submitting marginally relevant (at best) prior art in voluminous IDSs to satisfy rule 56, while on the other hand other applicants/attorneys are purposefully withholding prior art (and I'm not talking about citing specific references...the 'duty to disclose' applies to information material to patentability, which would, I'd think, include the background in general) by drafting applications without any meaningful Background of the Invention.

What gives?

Full post as published by Just a Patent Examiner on May 31, 2007 (boomark / email).