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American Bar Association - Defending Liberty, Pursuing Justice

Summer 2009

Vol. 5, No. 4



Preparing and Prosecuting the Patent Application

“Preparing and Prosecuting the Patent Application” addresses three topics: preparing the specification, responding to claim rejections during prosecution, and working with the inventor. These activities may seem unrelated, but each should be informed by the same notions that inform the analysis and claiming of the invention—the inventive concept, the problem, the solution, and the fallback features.

Chapter Sixteen begins the overall topic of preparing the specification by considering who its audience is and what their needs are. It then focuses on the first two sections of the specification—the Background of the Invention and the Summary of the Invention—and explains how the problem-solution statement can serve as the basis for an effective, storytelling Background and Summary that can engage that audience and, in the process, advance the interests of the patent owner.

Writing the Background and Summary

The writing of a patent specification should be guided by the same principles 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 invention . . . [sufficient] to enable any person skilled in the art . . . to make and use the same . . .Enablement is only a minimum legal requirement, however. An effective 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 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 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 Opposing 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 professionals— 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 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 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 tension. 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.”

It is not difficult to construct such a Background, but there are ways to enhance its story-telling effectiveness. These are illustrated both by examples in the discussion below and by a fictional patent for the invention of the chair presented in Appendix C.

Begin With the End in Mind

Chapter Eight alluded to Stephen Covey’s exhortation, “Begin with the End in Mind.” There we were talking about drafting a claim by working backward from the inventive departure. The same idea applies to the Background. Its presentation of the prior art is driven by where the story is headed—the inventive solution. As discussed below, the style of Summary recommended by the author starts out with a one-sentence statement of the inventive solution. This is possible only if the necessary groundwork has been laid in the Background. Indeed, anything that is in the Background should be there because, one way or the other, the Summary relies on its being there.

Keep It Short and Conclusory

The problem is best described at a high level, without a lot of detail. This does not mean skimping on the story line. The Background should provide a full accounting of the problem and how the prior art falls short of solving it. But the technical details of the prior art should be kept to a minimum. The story moves along just fine if the prior art is described only in general terms. The Background best holds the reader’s attention when it says as little as needed to make its point.

Ronald Slusky mentored dozens of attorneys in “old school” invention analysis and claiming principles over a 31-year career at Bell Laboratories. He is now in private practice in New York City. This article is adapted from his book I nvention Analysis and Claiming: A Patent Lawyer’s Guide (American Bar Association 2007). His monthly column, Invention Analysis and Claiming, appears in Intellectual Property Today. Slusky also teaches a two-day seminar based on this book ( He can be reached at 212-246-4546 and

Invention Analysis and Claiming: A Patent Lawyer’s Guide

Did you find this article helpful? Do you need more information regarding inventions or patent law? To provide some basic assistance in this area, we are pleased to introduce the Invention Analysis and Claiming: A Patent Lawyer’s Guide. This book should provide attorneys with some basic knowledge that will allow them to get started with preparing patent applications.It can be purchased at:

© Copyright 2009, American Bar Association.