Should Patents Have Background and Summary Sections?

Greg Aharonian's recent PATNEWS newsletter mentions that he is reviewing the book Drafting Patents for Litigation and Licensing, edited by Bradley Wright of Banner & Witcoff. A chapter in that book led Greg to raise the question about whether inventors and patent owners are helped in any way by including background and summary sections in patents. Greg mentions that numerous risks that can arise when prior art is improperly discussed or when statements in the background or summary sections are imported by judges as unwanted limitations in claims. With all the risks, and with no legal requirement to include such sections, why do it?

It's a fair question and perhaps patents will be more successful if unnecessary sections are left out, but there's another perspective to consider.

Greg is not alone, and in fact is thinking along lines of Irving Kayton et al. at PRG who have been advocating barebones approaches to skirt the numerous pitfalls from judges and courts. (I really enjoyed the "Drafting and Crafting Winning Patents" course I took from them several years ago where they introduced their minimalist concepts.) Skipping the background and summary makes a lot of sense with those concerns in mind. However, the chance of a judge abusing your issued patent is minuscule, and in fact is ZERO if it doesn't get past the Examiner. In light of KSR, I would argue (and do so argue in the book Conquering Innovation Fatigue from John Wiley & Sons, 2009) that it is valuable to build some storytelling into the patent to help the examiner avoid the temptation of applying hindsight to the invention and, when possible, to help the Examiner see that the invention involved more than just conventional problem solving to deal with known problems in standard ways.

Sometimes the key to a brilliant invention is discovering what the real problem was. Once understood, the solution may seem "obvious" and straightforward, and if the patent just presents the solution, the nonobvious nature of it may be lost upon the examiner. Examiners are people who will be most helpful in advancing patents when they get the story and have their imagination captured, and that is what can be done in the background and summary. Tell a story to advance your nonobviousness position, but do be cautious about discussing prior art and avoid listing benefits or "objects" of the invention which can certainly haunt you in future litigation. But when there isn't much of a story that needs to be told, skipping the background altogether might be wise.

Another consideration is the benefits of helping others besides judges appreciate and understand the invention. This might include members of a jury as well as potential licensees or business partners. Again, the storytelling role of the background can add value to the patent.

Storytelling: it's what marketing is, and patents need to be drafted with marketing insights and plans in mind for both long-term and immediate success.

The Miazaki Case: Raising the Bar for Definiteness in Patent Claims

A senior patent examiner at the USPTO in a phone interview recently stressed the precedential BPAI case, Ex parte Miyazaki, Appeal No. 2007-3300 (BPAI 2008). In this interesting case, the Board had trouble with the language in this claim:

1. A large printer comprising:
a paper feeding unit operable to feed at least one roll of paper, at least one substantially flat sheet of paper and at least one stiff carton, the paper feeding unit being located at a height that enables a user, who is approximately 170 cm tall, standing in front of the printer to execute the paper feeding process including replacement of the roll paper and setting at least one of the sheet of
paper and the stiff carton;

a printing unit located below the paper feeding unit;

a discharged paper stacking unit located below the printing unit; and

a paper feeding path extending in a substantially straight line from the paper feeding unit to the discharged paper stacking unit via the printing unit.

The claim tried to describe a relationship between a person of average height and elements of the printer, but the Board found that there were infinite possibilities in the actual structures described. Where was the person standing - on a platform, for example? And where was the printer - on the floor, or on a table, or what? Given the uncertainty, there is certainly an argument that the claim is indefinite and thus invalid.

However, the Board did more than simply identify the indefinite nature of the claim. They went much further in giving a new standard for finding a claim indefinite under Section 112, paragraph 2. Woodcock Washburn LLP notes the problem in their client alert, "BPAI Expands Definiteness Requirement During Patent Prosecution in Ex parte Miyazaki":

On November 19, 2008 the Board of Patent Appeals and Interferences (Board) announced in the above captioned case that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, slip op. at 11-12....

The mischief created by the Board in this case is not whether the claim is or is not indefinite under the statute but, rather, it is found in the Board’s broad holding regarding the application of 35 U.S.C. § 112, second paragraph. Many claim limitations are amenable to two or more reasonable constructions as that is what gives a patent claim breadth. If the Board’s holding is taken at face value, we can expect a flood of rejections of claim terms as being indefinite under the statute.

It may be increasingly important to review claim language carefully and make sure that at least some claims avoid multiple interpretations in ways that could fall under Ex parte Miyazaki. Naturally, almost every limitation of every claim has gray areas that could be interpreted in multiple ways. I hope reason will prevail in the quest for definiteness in claim language.