Category Archives: Patent Drafting

Easter Lore and a Drafting Lesson

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You never know what tidbit you will pick up reading a patent. For example, U.S. Patent No. 6,325,691, on a Packaged Toy, is full of fun facts about the origins of Easter Traditions:

The Background of the Invention of a patent is fraught with peril for the patent drafter. First of all, you probably should use “the invention” in the heading. Define the Field of the Invention too broadly, and you invite the application of prior art that otherwise would be non-analogous. Say too much about the prior art, and you create admitted prior art. Criticize aspects of the prior art unrelated to the invention, and you may have disclaimed them. The ‘691 patent avoided most of these problems by simply recounting fun facts about Easter Traditions.

For example, did you know that in “Europe it was believed that eggs laid on Good Friday, if kept for a hundred years, would have their yolks turned into diamonds”? ‘691 Patent, Col. 1, ll. 15-17.

Did you know that the tradition of coloring Easter eggs came from the Crusades? ‘691 Patent, Col. 1, ll. 20-22.

What do you know about the history of the White House Egg Roll? It all started back on the lawn of the Capital, during the Andrew Johnson administration:

‘691 Patent, Col. 1, ll. 20-22. The ‘691 managed to avoid most of the problems that can arise from the Background Section. Happy accident, or cleverly hatched plan?

A Little Background on Columbus

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First, a little background on Backgrounds. 37 CFR 1.77(b)(7) suggests that an application should contain a “background of the invention.” However the MPEP is ambiguous as to its content:

Experienced practitioners know that the Background is just another opportunity to make a mistake. From calling it a “BACKGROUND OF THE INVENTION” rather than simply “BACKGROUND,” to admitting admitting prior art that is not prior art, or otherwise limiting the scope of the claims, ther seems little to be gained and much to be lost with a carelessly drafted background. While patent applications continue to include Backgrounds, they are getting shorter and less detailed.

An interesting example of an old-school background, particularly apropos on Columbus Day, is the Background in U.S. Patent No. 5,802,513:

The drafter probably should have stopped right here, and today probably would have stopped right here. A hint about the subject matter of the invention, and the problems it addresses, without admitting anything in particulary is prior are, and without saying anything that might otherwise limit the scope of the claims.