The art of crafting a patent application can be a wonderfully creative exercise. While all specifications and figures share some commonality in content, there is great freedom available to the drafter. The drafter can craft patent applications in different styles suited to the particular goals of the client. The drafter can also take different approaches in how the inventive features are supported, and how they are introduced. Whether or not to include a story of the invention, background on the problem/solution, a wide or narrow range of alternative embodiments, more or less detailed examples, etc. are all questions to explore in this stage. Each of the various approaches has its positives and negatives, and the skilled profession has many choices to make in guiding the creation of the patent application.

One area of patent drafting that inventors can have difficulty appreciating (in terms of strategic impact) is when the detailed description and figures include features which are thought to be well known in the art. Some inventors may see this description and think “that is not part of my invention… that is the state of the art… why are we describing well known things in my patent application?”

It would be nice if there was a simple answer/explanation for this question, but in reality there are many interrelated underlying issues. To be sure, sometimes it is possible and sensible to remove such material, or conversely it would have been fine never to have included it the first place. But other times, there are strategic reasons to include description of well known subject matter. Below is a non-exhaustive list of issues that affect the decision of what to include or not include in the detailed description as to the so-called “state of the art” that is not part of the “invention.”

1. Context - for most patent applications, at the end of the day, a human being (at least for now), namely the examiner, is going to be the one making a decision on whether to grant a patent. If the specification leaves out so much of the state of the art that only a true expert in the field can understand and appreciate how the invention fits into the world in order to provide an inventive solution, then the application can be in trouble from the get-go. Many times drafters do not want to put such information in the background/summary of the invention (for the justifiable fear of the claims being limited by such information), and so the only place left for it to go is generally in the detailed description, or nowhere at all.

2. Section 101 - we all know the morass related to abstract idea rejections, which is no longer limited to software and biotech inventions (American Axle). Almost any invention can have Section 101 problems. As we have seen recently, description of the technical problems and practical application of an invention as to how the real world problem can be solved helps deter and/or overcome Section 101 rejections. However, to do this, it is sometimes helpful to describe the environment or context of an invention in more detail, thus leading to the inclusion of what the inventor might call “known technology that is not my invention.” While that may be true in some sense, the illogical and overly broad legal analysis involved in abstract idea rejections sometimes means that lacking such disclosure in the specification can make life very difficult in prosecution.

3. Amendment Opportunities - we all know the saying - there is nothing new under the sun. Often inventions involve a new combination of features known in the art, and one never really knows the full state of the art. Often distinguishing features can be found merely by limiting claims to the particular context or environment of the invention, or including a well-known feature in a new way. While of course broader claims without such limitations provide more coverage, they also bring in more art. So if you need to distinguish what looks like very relevant art by merely limiting the scope of coverage to the only known environment, that might be something the applicant is willing to do to obtain coverage. But if the specification has no such disclosure, the applicant will not even have the choice.

4. BRI - as we have discussed in the past, sometimes this is the broadest most unreasonable interpretation (B’MURI). While an applicant may eventually win an appeal of rejections with unreasonable interpretations, often an applicant would be willing to just make the claim slightly more specific in order to eliminate the unreasonable interpretation and avoid the appeal. Yet again, however, if the specification does not have further details on a feature (which in isolation may be a well-known component) it can be difficult to find successful amendments in this regard. Further still, even without amendment, context in the specification can help rebut unreasonable interpretations.

5. Non-analogous art - as we have noted in the past, sometimes an applicant can be successful with non-analogous art arguments. But if the applicant has left the context too open in the specification, it can be difficult to craft a successful argument along these lines.

6. System interactions - sometimes prior art pops up in prosecution that blows what the inventor thought was their invention out of the water. However, if the specification included secondary considerations and interactions, such as how the invention affects other systems, or how other systems are modified to cooperate with the invention, such features can often provide valuable coverage, but only if they are included in the specification.

We could go on and on, but the point is that skilled professionals can have some very good reasons to include something in a patent application that seems like, at first glance, unnecessary and merely a description of well-known art.

On the other hand, that does not mean that every specification should spend 50 pages describing the state of the art. The skilled practitioner must use judgement, in light of the particular business strategy that works for the client, and in light of the particular facts of a given case, to carefully draft the specification where the invention is put in sufficient context, including description of what some inventors might say is “not” their invention, to maximize the potential for success and to meet the particular strategic objections of a given application.