Writing the Background and Summary

• Author: Slusky, Ronald D.
• Pages: 193-208

CHAPTER SIXTEEN

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:

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 person

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

allowance in the Patent Office, make the patent easier to license, and pro-

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

the invention to the judge and jury.

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

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

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 something

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

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

possible. They will certainly not do so if they feel they are being asked to

pay something for nothing. The specification is a place to convince the

Opposing Team that they are not being asked to pay something for nothing.

Judges and juries must decide if 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 pro-

fessionals—a seemingly impenetrable morass of “saids” and “means for.”

The specification should be expressed in “regular” English to encourage

judges and juries to try to read and understand it. Indeed, a patent appli-

cation that is easy to read and understand is more likely to get the atten-

tion 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 com-

pendium 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 Description, 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.”

194 PART IV: PREPARING AND PROSECUTING THE PATENT APPLICATION