Writing the Background and Summary

• Author: Ronald D. Slusky
• Pages: 269-284

269

CHAPTER EIGHTEEN

Writing the Background and Summary

The writing of a patent specification should be guided by the same prin-

ciples that guide invention analysis and claiming: problem, solution, and

inventive concept. Another important consideration is the specification’s

intended readership.

This chapter begins with a discussion of “the audience” and then

focuses in on the specification’s Background and Summary. The chapter

that follows discusses the Detailed Description.

The Audience

A patent specification must be detailed enough to enable a person skilled

in the art to practice the invention. This is the so-called enablement

requirement of 35 U.S.C. 112(a):

The specification shall contain a written description of the inven-

tion . . . [sufficient] to enable any person skilled in the art . . . to make

and use the same . . .

Enablement is only a minimum legal requirement, however. An effec-

tive specification speaks to an audience extending far beyond the per-

son skilled in the art. In fact, although we often say that the audience for

the specification is the person skilled in the art, there is no such real-life

reader. The person skilled in the art is only a legal construct defining a

standard for the specification’s required level of detail.

The specification’s real-life audience is multifaceted, comprising the

patent examiner, the Opposing Team, and possibly a judge and jury.

When written with this wider audience in mind, the specification can

further the interests of the patent owner in ways that a specification that

is minimally enabling may not. Such a specification can facilitate allow-

ance in the Patent Office, make the patent easier to license, and provide

an effective platform from which a litigator can argue the merits of the

invention to the judge and jury.

In one sense, everything ultimately does come down to the claims.

The examiner, for example, is principally focused on ensuring that the

270 CHAPTER EIGHTEEN

claims do not read on the prior art. However, allowance of the claims

is helped along when the examiner understands what the invention is

and is convinced that there is inventive subject matter to be claimed. The

specification is the place to convince him of that.

The Opposing Team is also focused on the claims. They want to

know whether or not the claims read on their product. But even if the

claims do read on the Opposing Team’s product, they will resist taking

a license unless convinced that their product takes advantage of some-

thing novel taught by the patentee. The patent owner’s goal is for the

Opposing Team to lay down their arms and take a license with as little

fuss as possible. They certainly will not do so if they feel they are being

asked to pay something for nothing. The specification is a place to con-

vince the Opposing Team that they are not being asked to pay something

for nothing.

Judges and juries must decide whether the claims are valid and

infringed. But before they hand over millions of dollars to the patent

owner, judges and juries want to believe that justice is being done—

that the essence of the invention has actually been appropriated by the

accused infringer. They are therefore likely to look to the specification

to be assured that justice is being done. Patent claims are a mystery to

most non-patent professionals—a seemingly impenetrable morass of

“saids” and “means for.” The specification should be expressed in “reg-

ular” English to encourage judges and juries to try to read and under-

stand it. Indeed, a patent application that is easy to read and understand

is more likely to get the attention of a busy judge. A jury convinced that

the inventive essence has been appropriated may return a finding of

infringement even if the claims somewhat miss the mark.

A specification that achieves all of this is more than just a compendium

of technical facts. It tells a story. It is a story of a problem, and of a solution

made possible by the patentee’s recognition of something that others did

not recognize. Ideally, that story is told twice—once in the Background and

Summary, as discussed in this chapter, and again in the Detailed Descrip-

tion, as discussed in the chapter that follows. Each of the two tellings is

built upon and amplifies the problem-solution statement.

The Background

The Background tells the story of a problem that others could not solve,

or could solve only partially or only in a complex or expensive way.

An effective Background brings the reader to a point of dramatic ten-

sion. By the end of the Background, the reader should be thinking two

things: “Yes, I see that there is a problem,” and “I wonder how they

solved it. Let me read on.”