obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Not Your Father’s Patent Application, Part 1

by Orlando Lopez

Today’s patent applications read significantly different from the patent applications written 10 – 15 years ago.  While in the 80’s researchers would review each issue of the Official Gazette and obtain the patents of interest in order to obtain a view of the background of the field, today’s patent applications are significantly less useful as technical documents.

From the legal point of view, while my mentors used to say that you could start by reading the summary and the claims and looking at the figures to analyze a patent, in today’s patents and patent applications that statement would not be accurate. The background section of today’s patent application typically does not include the references to other patents and publications, which were found in the patents and patent applications of 10 – 15 years ago.

In today’s patent applications, the references to patents and publications are found in the information disclosure statement (a required list of all the patents, patent applications and publications that may be relevant to the examination of the patent application). This change was brought about by the perceived practices in patent examination and also ensures that those references have been considered by the Patent Office during examination.  Therefore, you can obtain the same information as to what was included in the background by reading the background together with the information disclosure statement in a patent application or by reading the background and the references cited by the applicant in a patent.


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