Patents - May 12, 2019

Mission Impossible? How to Effectively Draft the Background Section of a Patent Specification in Compliance with Both USPTO and EPO Practice

Preparation of the background section of a specification that complies with the requirements of both U.S. Patent and Trademark Office (USPTO) and European Patent Office (EPO) requirements is tricky.

In U.S. patent applications, statements made in the background section can be considered an admission of prior art. Additionally, statements made in the background section of an issued U.S. patent can not only be used against expert testimony that describes the prior art differently and during claim construction, but also can have a limiting effect on claim interpretation.

In contrast, statements made in the background section of EPO applications that discuss deficiencies and technical problems present in the prior art are expected to be included.

This apparent dichotomy in rules often results in lengthy background sections for applications to be filed at the EPO, while many U.S. practitioners keep them short and sweet.

Read the full article on for Steinfl+Bruno founder and partner Enrica Bruno’s analysis of patent application guidelines in the United States and Europe, and learn why she thinks much of the common wisdom surrounding the drafting of background sections is misguided.