How to Write the Background of the Invention. Episode 17

Writing the Background of the Invention

Right now, we’re going through how to write each part of the patent application. The order I like to use, and the order I’ve followed in this podcast, is:

1. The Claims

2. The Drawings

3. The Detailed Description of the Embodiment

4. The Brief Description of the Drawings

5. The Background of the Invention

There is no single correct way to order the sections of your patent application, but I’ve found that using this order results in fewer revisions along the way.

What Goes into the Background Section?

In the Background of the Invention, you discuss what the state of things was before you came up with your invention. It is important that you do not talk about your own invention in this section.

The background section does not mean describing how you personally came up with the idea. For example, you shouldn’t say, “Then I went to my garage, started tinkering with circuits and gears, and came up with this invention.”

Instead, you should talk about:

• What already exists in the field.

• What problems current inventions have.

• What issues remain unsolved.

You don’t want to be too critical of other people’s inventions. Simply describe what they do and what they can’t do.

Avoid Discussing How Your Invention Solves the Problem

You should not mention how your invention solves the problem. The goal is to leave the reader thinking, “Hmm, that really is a problem. What could be done to solve it?”

Try not to give any clues about potential solutions. Why? Because the background section should only include what was already known before you came up with your invention.

If you describe your own invention in the background, you are essentially saying that your invention was already known. If your invention was already known, then it isn’t new or non-obvious, which means you cannot get a patent for it.

Even giving clues about how the problem might be solved can be risky. If you hint at how to solve the problem, it could suggest that the solution was already known, making your invention appear obvious rather than novel.

Example: The Avocado Slicer Patent

The background section is usually short—just a couple of paragraphs. Let’s look at the avocado slicer patent, U.S. Patent No. 8,726,799, which you can find with a Google patent search.

Some inventors prefer to mention specific patent numbers when describing existing inventions. Others keep it broad and simply describe what’s out there without naming patents.

In this avocado slicer patent, the first paragraph explains how people typically slice avocados:

• First, they cut the avocado in half, but the pit usually remains stuck in one half.

• Next, they remove the pit.

• Finally, they slice the avocado into multiple pieces and remove the slices from the skin.

You’ll notice that this description is broad and neutral. It simply describes how things are done without criticizing existing methods.

The next paragraph introduces an example of an existing avocado slicer. It describes a device with:

• A handle.

• A lasso-like blade at one end to remove the pit.

• A fan-like slicer at the other end.

The patent then states some limitations of the device:

• It is bulky.

• The lasso-like blade does not accommodate pits of different sizes and shapes.

• During slicing, avocado residue can become trapped in the spaces of the slicer.

Notice how this section doesn’t say the existing device is bad—it just points out some of its drawbacks.

Ending the Background Section

I usually like to end the background section with a sentence such as:

“Thus, there currently remains a need for improved avocado slicers” (or whatever type of invention it is).

This leaves the reader thinking, “Yes, I see the problems with the current devices. What could solve these problems? I have no idea—let me read on to find out!”

Nowhere in the background should you mention that your invention has a recess to grab the pit or other advantages. That information belongs in either:

• The Detailed Description of the Embodiments (covered in Episode 15), or

• The Summary of the Invention (which I’ll discuss in the next episode).

The “Field of the Invention” Section

There is one other brief section considered part of the background: the Field of the Invention. This is usually placed just before the Background of the Invention section.

Since it’s so short, I didn’t want to dedicate an entire podcast episode to it. While the avocado slicer patent does not have this section, most patents do.

For example, if you look up Patent No. 4,091,766 (for a pet collar that repels insects), you’ll see a simple example of a Field of the Invention section.

This section is usually just one sentence long. The format is typically:

“This invention relates generally to [broad category] and more specifically to [narrower category].”

In the pet collar example, the patent states:

“This invention relates generally to animal supplies and more specifically to animal collars which facilitate the detection, identification, and protection of an animal.”

Here’s how it works:

• The broad category: Animal supplies

• The more specific category: Animal collars that help with detection, identification, and protection

This section doesn’t go into any detail—it just establishes the general field of the invention.

When writing yours, you can look up a patent in the same field as your invention and use a similar structure.

Final Thoughts

If you need help drafting your patent application, you can contact me through the website. I’m Adam Diament, and until next time—keep on inventing!