The Patent “Background” Section – Caution Needed

The opening segment of a patent application, the “background” section, demands careful consideration. Many inventors indulge in extensive narratives, detailing the inception of their invention, its superiority over existing counterparts, and even personal backgrounds. However, a recent legal case, Akeva LLC v Nike, Inc. (2020), underscores the need for caution.

A Closer Look at Akeva LLC v Nike, Inc. (2020)

In this case, the Background section delineates the distinctions of the current invention—a shoe with a movable/replaceable heel sole—from existing ones. Attempts to generalize improvements, such as a compression-resistant midsole, encountered challenges. The court, referencing the Background section, clarified that a conventional fixed rear sole falls outside the invention’s scope.

Understanding the Pitfalls

Specifically, the Background section asserted, “[t]o date, there is nothing in the art to address the combined problems of midsole compression and outsole wear in athletic shoes, and these problems remain especially severe in the heel area of such shoes.” This assertion led the court to conclude that the invention necessitates both the movable/replaceable heel sole and the compression-resistant midsole.  A big mistake on the patent drafters part.  Oops.  

Takeaways for Patent Success

The key takeaway is to keep the Background section concise and avoid language that could limit the invention. While highlighting deficiencies in prior art aids comprehension, it’s crucial not to tether the invention exclusively to these shortcomings.

For optimal results, limit the Background section to a brief overview, focusing on the problem your invention addresses. Resist the urge for excessive details to mitigate the risks associated with unintentionally restricting your invention.