Great piece re background sections! The information one would typically include in the background section is also often necessary for successful prosecution in foreign jurisdictions and to overcome patent eligibility issues in the US. But you do have to be very careful about what you include for the reasons you mentioned and many others (providing possible justification for raising patent eligibility issues, examiners relying on it for straightforward obviousness/103 rejections). I think the best practice is to keep the background section very brief and high-level but to carefully include most of the information about the drawbacks of prior solutions, etc. in the detailed description section.
I mean, I agree with this; you raise great points. What I do lament a little bit is the fact that background sections contribute to the historical record. I’m mostly upset at courts for being too strict in the use of the background in claim interpretation. I hope that practitioners like you write sections that are good for clients first, but also consider to write them in a nice way to leave something for history.
Great piece re background sections! The information one would typically include in the background section is also often necessary for successful prosecution in foreign jurisdictions and to overcome patent eligibility issues in the US. But you do have to be very careful about what you include for the reasons you mentioned and many others (providing possible justification for raising patent eligibility issues, examiners relying on it for straightforward obviousness/103 rejections). I think the best practice is to keep the background section very brief and high-level but to carefully include most of the information about the drawbacks of prior solutions, etc. in the detailed description section.
I mean, I agree with this; you raise great points. What I do lament a little bit is the fact that background sections contribute to the historical record. I’m mostly upset at courts for being too strict in the use of the background in claim interpretation. I hope that practitioners like you write sections that are good for clients first, but also consider to write them in a nice way to leave something for history.