Summary Judgment - What should your application include?
Posted by: Bruce in Patent Prosecution, patent sections, tags: background of invention, invention summary, patent practice, patent sectionsGreg Aharonian, patent establishment gadfly and publisher of the email “Internet Patent News Service” (request subscription), raised an interesting question in today’s email:
Is there ANY benefit from have a Background/Summary section for your patent application? Should/must they be included?
The answers, according to Greg, are A) there is no benefit to the applicant and B) he doesn’t think the MUST be included. Quoting from Bradley Wright of Banner & Witcoff, Greg notes:
- the courts may read limitations into the claims based
on statements in the Summary- the courts/PTO may use your comments about the prior
art against your invention- the courts may read limitations into the claims based
on your comments about the prior art
So Greg says let’s eliminate the risk by not having a Background or Summary section. He supports this with the observation that he has not been able to find any statutory requirement for those sections.
But I disagree.
At the most basic level, I sure don’t want to be the (losing) test case whose patent is invalidated in court for lack of a background or summary. Greg is probably correct when he says that the patent examiner never reads those sections and/or will allow a patent that lacks them. But so what? Your patent examiner doesn’t check to see if you’ve made a public disclosure or prior offer to sell, but either of those actions can lead to invalidation in court too. Nor does the examiner check that your provisional application has adequate support for your utility claims, perhaps leading you to lose your priority date on those claims. So, to be on the safe side, pending a court ruling to the contrary, I’m going to work on the basis that background and summary material must, one way or the other, be included in my patent applications.
Of course, that begs the question of exactly how much substantive material needs to be in those sections. What should go in the Summary?
One approach I’ve written disparagingly about is to put a copy of the claims as the summary, with the argument being that this “summary” guarantees that no claim can ever be disallowed for lack of support in the specification - I think this is misguided logic that is as circular as defining a word using the word itself.
As far as the summary goes, if you (or your attorney) can write the detailed description of your invention, you should certainly be able to write a “harmless” summary description that serves the teaching function that the specification is supposed to do.
As far as the background section goes, I’d keep it short and sweet to lay the groundwork for the summary and detailed descriptions to follow but I’d avoid discussing the significant prior art. That is, use the background to lay out the problem, only discussing prior (attempted) solutions that are far away from your invention’s technology.
That’s my summary judgment.

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