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What factors should an inventor consider when deciding whether or not to include references to other art in the background section of their patent application?

It no longer seems to be a common practice.

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The factors to be considered are (1) setting a background or context for the state of the art in the field of the invention and setting up the problem which the invention solves, and (2) giving the examiner admitted prior art.

While a thorough description of the prior art may be good on a scientific level (showing that the inventor really understands the field and the problems in it), in patent prosecution (i.e., getting one) and litigation (i.e., enforcing one) it's dangerous.

If an application meets the statutory subject matter requirements for a patent and it is not identically disclosed elsewhere (35 USC 101 & 102), it will still frequently be rejected as obvious over a combination of references in the prior art (35 USC 103).

The applicants, if they don't agree, can then try argue (among other things) that one or more of the references do not, in fact, constitute prior art. For example, in an application in the art of baking, if the examiner found a reference disclosing a critical step, but the reference was in the field of nuclear physics, the applicants could argue that nuclear physics is unrelated to baking, and an ordinary baker would have no knowledge of art in nuclear physics. However, if you state in the application that something is prior art, then it is - and it's practically impossible to undo it later.

So, the practice of citation of specific prior art in the Background section of the application is becoming less common because there is no real benefit to it for the purposes of either getting a patent or enforcing one, and there are potentially serious negative consequences.

-Aldo

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    Essentially you're saying being inspired by, but not citing anothers work may increases your chance of getting a grant, but in doing so you could end up in costly litigation down the line ;-) Oh and omitting citations will also slow down and increase the complexity of future prior art searches ;-) Bit of a pain as I remember Casio selling a useful heart rate monitor watch that beeped you through the: Harvard, Queens College, YMCA .... fitness tests, just taken an hour to find the patent, as it fails to cite the originators of any of the tests / scores / algorithms it implements: US 5615685 A – arober11 Mar 18 '15 at 18:14
  • @Aldo So, the practice of citation of specific prior art in the Background section of the application is becoming less common because there is no real benefit to it for the purposes of either getting a patent or enforcing one, and there are potentially serious negative consequences. Is there any further logic than what you stated? Your post was rather helpful, it is also incredibly sad. – Ted Taylor of Life Nov 5 '17 at 15:41
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    @TedTaylorofLife, maybe to clarify. Art is still robustly cited in IDS filings, and they publish on the front page of the patent. What is less done is analyzing and/or explaining prior art in the application itself, for the reasons explained in the answer. – tilnow Nov 5 '18 at 22:12
  • @arober11 - not citing others in any detail is more a benefit in later litigation than in getting the patent. The examiner does their own search and may be more confident in what they turn up than what you cited. A court that might say you mischaracterized something you analyzed in order to hide the ball from the examiner or that something that clearly falls under the wording of one of your claims doesn't really infringe because it has some deficiency that you mentioned was a big negative of some prior art thing. Also, something not technically prior art becomes prior art if you say it is. – George White Jul 28 at 3:28
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In Australia, the test of prior art includes common general knowledge and one or more pieces of prior art. We can't normally combine pieces of prior art unless it is logical to do so - referred to as incorrect mosaicing. However, if a patent mentions prior art, then it would be logical to read the documents as one document. Therefore all the pieces of prior art can be combined to use them in an invalidity claim.

Thus, citing prior art is a very bad idea.

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