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[Alistair]

Maybe it's just a coincidence but I've yet to come across a patent where prior art was discussed like this, (patent numbers in the example below are invented)

"Other techniques in prior art allow a person to wear the strap with the application of a piece of metal or a string (see for instance US2008166727; GB4509682; US4540140; US3136676; US3821777;)."

Is it because applicants WANT to discuss each one on its own merit, or they NEED to?
Maybe they just want to make a longer application by elongating on each previous patented item?!?
Is it because it's a somehow risky strategy as to some extent they might be conflicting one another? 
Or would this be just acceptable as any other application?

[khazzah]

Maybe it's just a coincidence but I've yet to come across a patent where prior art was discussed like this, (patent numbers in the example below are invented)

"Other techniques in prior art allow a person to wear the strap with the application of a piece of metal or a string (see for instance US2008166727; GB4509682; US4540140; US3136676; US3821777;)."

Is it because applicants WANT to discuss each one on its own merit, or they NEED to?
Maybe they just want to make a longer application by elongating on each previous patented item?!?
Is it because it's a somehow risky strategy as to some extent they might be conflicting one another? 
Or would this be just acceptable as any other application?

You're asking why practitioners who choose to discuss prior art don't do so in a cursory mention rather than a more detailed discussion?

[Alistair]

Not necessarily practitioners, and I'm not sure it's really a choice to discuss prior art. What I meant is that I just don't know if I can sort of group together similar prior art like this "(see for instance US2008166727; GB4509682; US4540140; US3136676; US3821777)" , and in case what are the cons of choosing this path.

[klaviernista]

Not necessarily practitioners, and I'm not sure it's really a choice to discuss prior art. What I meant is that I just don't know if I can sort of group together similar prior art like this "(see for instance US2008166727; GB4509682; US4540140; US3136676; US3821777)" , and in case what are the cons of choosing this path.

There are many pitfalls to discussing prior art in the specification.  That is why you don't see many patent applications go into lengthy discussions about what reference A teaches, what reference B teaches, etc.  Far better to simply cite the references in an IDS and let the Examiner characterize them.

In view of the aforementioned pitfalls, there are some attorneys (including myself) that specifically try to avoid discussing or mentioning prior art documents in the specification of a patent application.  I have even gone so far as to write some patent applications without a background at all.

All that said, you can simply provide a list of other documents in the background section.  But you should understand that by doing so you may be making certain admissions that you may not want to make (e.g., that the other documents are "prior art," that they are "analogous art," etc.). 

I'll put it to you this way.  If a junior attorney prepared a patent application that included a background referencing other patents/documents, I would probably edit those references out unless the client insisted that they be referenced in the application. And even then, I would probably counsel the client against including those referncing statements.

[khazzah]

If a junior attorney prepared a patent application that included a background referencing other patents/documents, I would probably edit those references out unless the client insisted that they be referenced in the application. And even then, I would probably counsel the client against including those referencing statements.

I second both.

Not necessarily practitioners, and I'm not sure it's really a choice to discuss prior art. What I meant is that I just don't know if I can sort of group together similar prior art like this "(see for instance US2008166727; GB4509682; US4540140; US3136676; US3821777)" , and in case what are the cons of choosing this path.

I still don't understand your question. Of course you can group prior art -- there is no requirement that you list or discuss prior art in in your application at all, and if you choose to, there are absolutely no restrictions on how you structure your list or discussion, or what the contents of that list/discussion are.

The main reason not to discuss prior art is, simply put, that it gives the Examiner ammunition for a rejection. That's a con.

What are the pro's, ie, what is your reason for a) discussing the prior art in the first place and b) grouping the prior art. 

[JimIvey]

If a junior attorney prepared a patent application that included a background referencing other patents/documents, I would probably edit those references out unless the client insisted that they be referenced in the application. And even then, I would probably counsel the client against including those referencing statements.

I second both.

I also agree with both.

There's absolutely no obligation to discuss specific prior art references in an application.  I don't see any advantage to doing so, but there are significant risks.

Regards.

[NJ Patent1]

Thanks to all!  Wow, I thought I was alone in the thinking that nothing in sec. 112 requires a "Background" w/ a discussion of the prior art.  I'm printing-out this string for posterity.  The only time it's a tough call is when the client doesn't have $ to file a US (no PA discussion), and a PCT (w/ PA discussion to set up problem-solution for EPO) on the same day and I'll have to use my US application as basis for an EPO application (if $s arrive in time).   

[klaviernista]

Thanks to all!  Wow, I thought I was alone in the thinking that nothing in sec. 112 requires a "Background" w/ a discussion of the prior art.  I'm printing-out this string for posterity.  The only time it's a tough call is when the client doesn't have $ to file a US (no PA discussion), and a PCT (w/ PA discussion to set up problem-solution for EPO) on the same day and I'll have to use my US application as basis for an EPO application (if $s arrive in time).   

Can you comment on the problem solution issue?  I was not under the impression that the absence of a background prevented that from being established in the EPO. 

[Dazed-n-confused]

Can you comment on the problem solution issue?  I was not under the impression that the absence of a background prevented that from being established in the EPO. 

The EP examiner wants to get a sense of the problems inherent in the closest prior art and what your invention's objectives are in solving these problems, and then wants to make a comparison of your solution in view of the problem.  (Bear with me, this is background you likely already know.)

US drafters of course try to limit background discussion (if any) to general problems in the known art, we've been told to avoid reciting background patent numbers specifically, and we've been told to avoid describing "the objects" of the invention.

So sometimes when I'm prosecuting a scant background US-based app in the EPO, the Examiner will throw up his hands and actually ask us to define the problem being solved by our invention, so that he can make an inventive step determination under the P-S approach.

And almost always they require us to add a background section describing 2 or 3 pieces of "closest prior art" (being background, and forming no part of the invention, this is not a "new matter" problem under EPC practice).  This can also happen even with a lengthy prior-art laden background, if the background as written failed to describe the documents turned up in the ISR/IPRP that the examiner decided were closest prior art.

I worked in one place where they had in-house EPO attorneys, and they would do what NJP1 describes - draft into the PCT app a more fulsome background section if the US priority background section was deemed too scanty.  But waiting for the EPO examiner to prompt you for it works just as well.

[NJ Patent1]

Klavernista: I'm not EPO qualified per se.   But I've had a number of battles (vicariously via my local connsel).  As far as I know, lack of a "backgound" does not prevent the EPO from establishing a problem-solution.  But see the requirements of r.42(1)(b) and r.42(2) EPC.   I've been required by the EPO, via local counsel, to amend specifications to include such (or further) discussion of the state-of-the-art.  What I do when there is no separate simulatneous PCT and I include only a perfunctory background in my US application.  But watch out for what we in the US call "new matter" rejections!  I feel caught betwen a rock and a hard place.  No background, no getting my words thrown in my face at the USPTO, but a possibly deficient description in the EPO.   

So, with encouragement from local counsel, I put in a background in a separtely but simultaneously filed PCT.  The "state-of-the art" (which appears to be required, see above) allows me to highlight my view of the "special technical features that produce a useful effect".  Set-up the problem-solution the way I want it.  Of course, on occasion, my views on such have gone down the tubes in view of prior art of which I was not aware. 

Hope the foregoing is resposive to your collegial request.

[Simpletown]

As you can see from the above posts there has been a very strong trend in the U.S. away from describing the invention and putting it in context with the prior art. It sometimes makes it far too easy for the examiner to reject the application, among other issues. In regards to your specific question of why practitioners explain the prior art, there are several reasons.

1) If you are citing prior art or patents in the specification at your clients wish, you normally want to state why those applications are different than the current invention. Basically you try and steer away from an obvious rejection.

2) Sometimes the client asks you to specifically get around a patent and it seems helpful to characterize an important prior art loophole you find, or to set up the improvement/unexpected result you came up with.

3) If you are actually writing Jepson claims (rare) you pretty much have to state how the prior art relates.

4) If your client wants to hide something important but use it in the future, sometimes you hide it using incorporation by reference. I.e. you reference art that teaches what you need, without drawing all the figures/structures/etc. yourself. For this to work you have to be citing U.S. patents, applications, or publications. You also have to state exactly what you are incorporating. Thus you have to say what the reference teaches in order to properly rely on it in the future.

In most cases, if you are citing prior art in the specification it is often useful to say something about it. Just randomly citing things would cause more trouble than it is worth and is better left for an IDS.

[NJ Patent1]

Simpletown:  This is tangential and just relates to and reinforces your comment to make clear what you are / are not incorporating.  Just sharing a war story.  A client of "big law" that I one time worked for - and "big law" itself - learned a hard lesson from incorporating "in the entirety".  Words in the background of the entirely incorporated reference -in a patent not in suit! - were crammed down client's throat in big bucks pharma litigation. Public document with statements against interest.  I no longer incorporate that which is "known in the art".  Just cut-and-paste the words needed.  True, only a fraction of issued patents get sued on.  But one does not know the future.