What We Lose When We Lose Background Sections

Background sections are increasingly getting skinny, but the historical record loses something

About two weeks ago, I read an article in the popular tech publication, The Verge. The article is an ode to the humble water fountain, specifically the water fountain button. As it turns out, this was a rather significant innovation. It took roughly 15 years for someone to even imagine a drinking fountain with a push button and about 30 years for them to become widespread; the original drinking fountains either had squeeze-based controls or just spewed water for 18 hours a day. And even then, it took decades for maintenance to get easy.

What I loved so much about this article is that it told its story using patents. In particular, the author not only looked at the functions of various patents but also at the descriptions of the problems being solved, which is often found in the background section. Yet background sections are increasingly viewed with suspicion by practitioners. This week in Nonobvious, I’ll discuss briefly why they require caution under existing precedent, yes, but should still be preserved as part of a patent.

The Background on Background

The USPTO MPEP 608.01(c) guidelines for backgrounds are extremely sparse. Although a field and prior art section are recommended, this is much less common than it used to be. In fact, many patent applications do not have a field section at all and do not use the term “prior art” in the header. Some guides now suggest a three-sentence background section. Interestingly, however, a background section is not required. As a result, some practitioners I have spoken to are not even writing them at all!

The reason is simple: the background section can come back to bite you. First, it can be used to limit your claims. If the background section is too tightly tied to the claims—for example, by using the phrase “the invention” or tying back to specific pieces of prior art—courts may use it to limit your claims. Take Mosaic Brands, Inc. v. Ride Wallet, LLC, Case Nos. 22-1001, -1002 (Fed. Cir. Dec. 20, 2022). Here, an extremely narrow claim limitation was upheld by the use of the word “the invention,” which the Federal Circuit took to incorporate the entire invention, even terms that did not appear in the background, like “the lip.” The other issue is a nonobviousness or anticipation rejection under applicant admitted prior art (“AAPA”), which USPTO defines in MPEP 2129. Remember, AAPA can even transform something that would not be considered prior art into prior art! The background section is a big part of that.

What this is supposed to mean is that you say as little about the prior art as possible. In practice, it has meant that background sections have gotten shorter to the point where often they are generic and non descriptive. And that is a shame, because patents are also time capsules.

The history of patents shows that patents are intended to facilitate disclosure of inventions as a social good in itself. Many functions of patents serve this dual purpose. Patent citations, for example, not only help examiners determine prior art, nor do they only help new inventors learn about the development of a technology. They also help amateur historians understand how inventions related to each other decades later. Assignment records not only are required for notice purposes but also show, a long time later, the commercial journey of an invention. This turns patents into historical records, not just functional tools with no purpose once they are expired (except for anticipating other inventions, of course).

A background section helps fulfill that purpose. While it may help an examiner or jury understand the purpose of the invention, in reality the practical purpose is quite small. What it really does it help posterity looking at a patent a hundred years later understand why an invention is important. One does not need a background section to know that the Edison lightbulb was meant to improve on the original Volta design. But it is likely that without a background section an enterprising historian wouldn’t know that in 1911 it was possible to create fountains with buttons but that they were viewed as too expensive. And even for famous patents, like Google’s PageRank, background sections can give fun context decades later. It is notable, for example, that the Internet was a mere 500 gigabytes in 1998, and that this was considered massive; it is also interesting that Google’s patent application doesn’t mention Yahoo! once but does mention IDD, a long-forgotten company.

A well-written background section should be brief, but it should frame the problem. I hope that while background sections stay short that they also remain fun and don’t disappear altogether.

Meet the Author

If you’re in the IP world, there are several opportunities coming up to meet the author of Nonobvious, Evan Zimmerman.

Evan will be teaching a class on robot patent drafting tomorrow morning.

Evan is also at AIPLA today and tomorrow, as well as INTA starting on Saturday. Come find him!

Prior Art

Recently, we covered the new USPTO guidance about AI inventorship. Since then, a number of you have reached out. The most interesting was a partner at a leading firm who told me his firm took the position that they must draft all claims to avoid inventorship issues (my response: wouldn’t that also introduce inventorship issues with the general practice of patent law?)

In any case, there is now controversy over the new USPTO guidance. Specifically, some tech companies (Google, Amazon) think this is great while others (IBM, BIO) think it is far too vague. My two cents: it is too vague, but it at least has enough for courts to hang their hat on in inevitably ruling in a very broad way in favor of inventors.

Weekly Novelties

• In a disturbing Reddit post, a USPTO examiner admitted to introducing political biases into the examination process, leading to calls for investigations into USPTO (Twitter of Senator Thom Tillis)

• An analysis of Kewanee, a key SCOTUS decision that preserved trade secrets as a form of IP. Interesting to learn that in the 1960s some courts fought against trade secrets as restraints on trade and impinging on Congress’s powers vis a vis IP (IP Watchdog)

• Thought about printers in a while? No? Well, Xerox just won a big patent case in the printer space (Law360)

• An analysis of the difference in NPE licensing strategies between UPC and US suits (IAM Media)

• USPTO proposed a major change to terminal disclaimers, essentially requiring a commitment against double patenting; this would be a major shift (Wilson Sonsini)

• An interesting discussion of the PREP Act and how it might impact IP rights (PatentlyO)

• An interesting analysis of 337 trends. Basically, dissents have increased sharply in the last 10 years, there is interest in being able to tailor injunctive relief, and there is potential for a FRAND defense, which typically is not used (IP Watchdog)