You’ve heard it before, whether from an insistent client, from a partner or senior associate for whom you were working on a project, or from a colleague in an ever fascinating discussion of the nuances of patent application drafting. “You have to tell the whole story.” “This may be the case that ends up in court and you want to lay out everything in the background to make it easier for the judge and jury to understand.” “This is the same introduction we used for our paper/abstract/poster – you can just throw it into the application background section to save time.”
And the procedure is seductive, especially for personalities of the sort that find themselves in patent prosecution practice and in particular in the biotech field. Many of us were scientists prior to our legal endeavor, having spent many hours writing papers or grant proposals and carefully laying out the problem that needed solving along with the logic we used to find the solution. Modesty was key. Group X made one finding, group Y made another finding, and we decided to try it here under different conditions and it worked. Or, two years ago we made a first determination and more recently made a second unrelated determination, logically leading us to make this conclusion.
Thus, for many of us, it’s entirely natural when drafting a new application to want to lay out the history of the invention from the beginning to the end. The wiser amongst us have counseled against this approach for many years. If we didn’t heed their warnings prior to the Supreme Court’s decision in KSR International Co. v. Teleflex Inc. (550 U.S. 398; 82 U.S.P.Q.2d 1385 (2007)), we should be so inclined from now on.
Under Part IIC of Justice Kennedy’s opinion when discussing the errors made by the Court of Appeals in its obviousness analysis, we find the following passage:
“One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Emphasis added.
The client’s interests are best represented by a patent application that does not provide the Examiner with all the information he needs to issue an obviousness rejection of the claims.
A known problem. Sometimes, it’s just impossible to avoid defining the problem. It might be an old drug with a new use such as treatment of thyroid cancer. Well, people get thyroid cancer and that is the problem. A practitioner can do little to avoid this type of situation. However, sometimes identifying the problem is part of the invention. Perhaps identifying why conventional treatments are less effective or have certain side effects required innovation. When drafting an application we should emphasize why the identification of the problem required innovation and creativity, and certainly refrain from placing such information anywhere but the Description section of the specification. Alternatively, this information can be saved for a later date, when, during prosecution, a § 1.132 Declaration might be helpful. Regardless of when and how you use information defining “the problem”, there is no obligation to make the Examiner’s job easy by providing him with cheap ammunition for a rejection.
An obvious solution. Justice Kennedy goes on to write later, still under part IIC, “that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle”. As the one preparing the patent application, we might know all the pieces of the puzzle. That doesn’t mean that those pieces fit together in any obvious way at the time the invention was made or that it would have been obvious to even attempt to put the pieces together. However, looking back there may be a reasonable explanation as to why it worked – we have no obligation to provide this explanation, particularly in the Background of the specification. Again, this information might be useful in a § 1.132 Declaration, or possibly in the Description but couched as theory. Let the Examiner develop his own reasoning as to why the solution might be obvious rather than using our own words to make his arguments.