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Topic: Provisional app need to cover all background items (Read 448 times) |
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JodiB
Newbie
Posts: 15
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Provisional app need to cover all background items
« on: Aug 16th, 2006, 11:41am » |
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I'm filing for a provisional patent application myself (call me crazy, I've never filed for a patent before). In the Background section I have listed numerous problems with other solutions. I believe my invention covers all those problems in one novel swoop. Do I need to spend the effort to explain how each problem with other solutions is covered?
I don't think so but checking anyways.
What if in the Background section I've listed a problem with another invention that my invention also doesn't cover? in other words, somebody comes up with a technical flaw in my invention (not patent but just an area of improvement) that I pointed out in prior art section will I be causing myself patent troubles?
Or maybe to ask both these questions another way - is it better to just include a minimum of problems with other prior art (even though my invention may solve other problems too)?
Thanks. I've learned a lot reading these forums.
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Wiscagent
Full Member
Posts: 843
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Re: Provisional app need to cover all background i
« Reply #1 on: Aug 16th, 2006, 12:31pm » |
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"... call me crazy ..."
Dear Crazy,
My suggestion for the Background section is to keep it short and not get into any detail about why a particular prior art approach did not work well. I'd write something like this:
Jones (US Pat x,****,****) describes a gadget to solve the
problem. Smith (US Pat y,yyy,yyy) discloses the use of a
widget to solve the problem. Miller (PCT zzz,zzz) teaches
the use of a gizzmo to address the issue.
These references indicate that there is a long felt need in
the industry to resolve the problem.
Obviously you have to define the "problem" a bit, but you should avoid a point-by-point explanation of why your invention is better than the prior art.
Richard Tanzer
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Richard Tanzer
Patent Agent
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wallflower
Junior Member
Posts: 96
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Re: Provisional app need to cover all background i
« Reply #2 on: Aug 16th, 2006, 12:31pm » |
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Background sections can be dangerous if you, among other things, mischaracterize prior art, unnecessarily cite prior art, or provide limiting admissions.
Given your lack of experience, I would strongly suggest you seek counsel instead of pursuing this on your own.
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JimIvey
Moderator
Senior Member
 
Posts: 2584
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Re: Provisional app need to cover all background i
« Reply #3 on: Aug 16th, 2006, 12:41pm » |
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on Aug 16th, 2006, 11:41am, JodiB wrote:| I'm filing for a provisional patent application myself (call me crazy, I've never filed for a patent before). In the Background section I have listed numerous problems with other solutions. I believe my invention covers all those problems in one novel swoop. Do I need to spend the effort to explain how each problem with other solutions is covered? |
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You don't have to, but it begs the question as to why you bring up a particular problem if you don't offer a solution to the problem. I don't think the background section is strictly required at all.
on Aug 16th, 2006, 11:41am, JodiB wrote:| What if in the Background section I've listed a problem with another invention that my invention also doesn't cover? in other words, somebody comes up with a technical flaw in my invention (not patent but just an area of improvement) that I pointed out in prior art section will I be causing myself patent troubles? |
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It's not a fatal flaw to a claimed invention to be less than perfect. If it were, how would we have over 7,000,000 issued patents? However, it doesn't help you to point out shortcomings of your invention.
What does help is pointing out something that appears to be a disadvantage that you convert to an advantage -- it helps to show non-obviousness.
on Aug 16th, 2006, 11:41am, JodiB wrote:| Or maybe to ask both these questions another way - is it better to just include a minimum of problems with other prior art (even though my invention may solve other problems too)? |
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The less you say in the background section, the better. Everything in the background section is considered by the Patent Office to be admitted prior art, even if that's not what you intend.
I would suggest even being careful about putting too much known prior art in the background section. Putting two disjunct types of known prior art in the same background section may count as providing the required motivation to combine the two types for an obviousness rejection. It's very easy to shoot yourself in the foot when getting too eloquent and elaborate in your background section.
Be very careful.
Regards.
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--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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JodiB
Newbie
Posts: 15
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Re: Provisional app need to cover all background i
« Reply #4 on: Aug 16th, 2006, 2:56pm » |
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on Aug 16th, 2006, 12:31pm, wallflower wrote:Background sections can be dangerous if you, among other things, mischaracterize prior art, unnecessarily cite prior art, or provide limiting admissions.
Given your lack of experience, I would strongly suggest you seek counsel instead of pursuing this on your own. |
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hmmm so it sounds like 5 pages of Background may just cause me more trouble than it's worth.
I am finding that a typical cost of provisional pat app is around $1500, and then it mostly starts over again when filing for the non-provisional. My invention is in a hot new field and I am worried paying large costs only to find 6 months afterwards somebody has same invention but earlier first-to-invent. If I file provisional myself then I'm only out about $100+ my time but do risk not having perfect patent down the road, not an easy decision.
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