Benefit of omitting drawing and patent number of prior art in background?

Question

In an original draft of a patent application we have, the background contained a reference to a prior art by its patent number and a description of the prior art, and the first drawing is a drawing of the prior art. When the application was submitted, the patent number and the drawing were removed, but a description of the prior art remained.

When I asked the patent agent, she said that the patent examiner would customarily do OA on the prior art, and the omission was done to avoid that.

To me, that sounded ridiculous. The omission makes the background section fairly hard to understand. If the application is ambiguous or hard to comprehend, wouldn't that invite more OAs?

My opinion is that the background section should be short, easy to understand, very clear on the difference between the invention and prior art, and clearly call out the importance (benefits) of that difference.

So, is there any benefit to completely omitting drawing and patent number of prior art?

Answer 1

My answer to the question is No.

In my opinion, if there is a clear difference and contribution over the prior art that makes you invention new and inventive your patent is much better and clearer if the relevant prior art is present.

If your attorney wants to avoid the discussion of said prior art to get a broader scope in the granted patent this could lead to issues later if the validity of your patent is challenged.

Indeed the cited prior art will make the v search of the patent examiner better, because he has a good starting point.

Good luck with your application!

Answer 2

I agree with zip's answer on the whole, and I would probably take the approach they recommend. However, it occurred to me that you asked if there was any benefit to omitting the patent number. Which I think the answer is yes, for two reasons.

Speed and cost of prosecution

Your patent agent is probably right, in that mentioning a specific document in your application will cause the examiner to consider it. Even if the examiner doesn't cite it directly, the document may lead the examiner towards a tranche of related documents (by the same authors, for example) which might have otherwise remained unfound. Some of these might then be cited against your invention, and may prevent you getting a granted patent, or at least delay prosecution (and increase costs).

In theory, you would want a patent to be actually novel and non-obvious over any given prior art. However, in practice, sometimes you just want a granted patent as cheaply as possible. Because even an invalid granted patent has value (in that it can deter competitors). So avoiding the reference to a patent can speed up prosecution and reduce prosecution cost, at the risk of having less knowledge about the patent's validity.

Notice

In some territories (such as the US), damages for patent infringement are linked to whether the infringer knows about the patent. It can therefore be beneficial to disclaim any knowledge of a patent if there is any potential infringement. If you have a patent application which expressly refers to that patent, it would be quite difficult to argue that you didn't know about that patent.