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A "Field of the Invention" or "Technical Field of the Invention" section has been seen in fairly recently-granted patents, but not always. I have read advice that it's better not to include such a section because it may, in certain later circumstances of litigation, impose limitations. Is there a current consensus about this among experienced attorneys and agents?

(added for clarity): I am referring to a separate section near the beginning of the application, not part of "Background." Below is an example of the kind of statements that may be relevant in such a section. I would like to understand in what way could this ever limit the patent, since it is the claims that will actually define its scope.

The present invention is in the technical field of computing devices of both mobile and non-mobile types, encompassing both devices controlled by a touchscreen and devices controlled by a moving cursor. More specifically, the present invention is in the technical field of interface design and related functions for initiating and managing Internet and network communications involving ...(more detail here about specifically what its purpose is, from a user POV)

  • This is a very good question! In my own patent application, a very detailed "background" section was recommended by both my engaged and advisory patent attorneys. (This may be due to it being a fairly esoteric mechanical field, with context necessary as a primer on the history and use.) Limitation of claims can be a very valuable tool in terms of grant, but keeping things as broad as possible may be a good strategy at the start of the process, because you can always subsequently limit claims in review. – DukeZhou Jun 21 '17 at 19:15
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    Everything you say can and will be used against you ;-) – DonQuiKong Jun 21 '17 at 19:35
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    DukeZhou, please see the edited version of the question, which I hope will address your follow-up question. I don't have any issue with dropping this section from the application, just want to understand the basis for how this type of wording, being outside the Claims, might create problems later. – Charles Jun 22 '17 at 13:06
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    Thanks for clarifying! In some formats, "Field of the Invention" is a section of Background. (Good article by Gene Quinn, although from 2011, so you'll want to find some post-Alice sources for current thinking on the matter. Still, very useful overall advice.) In relation to my recent filing (2015/2016) we didn't include Field of the Invention at all, and only talked about the scope in the Claims. – DukeZhou Jun 22 '17 at 17:16
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    I want to propose an alternative question you could include “is there any benefit on having this section“ - because if not, leave it out – DonQuiKong Jun 22 '17 at 19:33
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This answer is not intended to constitute advice (I'm an inventor, not a patent attorney;) but rather provide perspective, based on my recent software patent application, filed in 2016.

In drafting the non-provisional, I engaged a patent attorney who specializes in my sub-field. The draft was reviewed by two advisory patent attorneys, one in tech and one in biotech (the latter for an alternate perspective.)

My engaged attorney did not include a "Field of the Invention", and neither of the advisory attorneys suggested I should do otherwise.

This indicates to me that "Field of the Invention" is not necessary, and is probably avoided to keep the scope as broad as possible at the outset. (Claims can always be subsequently limited during the review process.)

Your "Field of the Invention" seems broad enough to encompass any potential application, but since this section is not required, the safest bet may be to avoid it entirely.

  • Thanks for that input and perspective. To answer a question from your earlier response above: A provisional was filed in April and I am working on the NP. I have not engaged an attorney for review, advice, fixing screw-ups, etc. but I may still do that, not sure. I think there wasn't a strong justification for a provisional in my case, but I feel it provided a psychological advantage for me. (I got through my 1st experience using EFS Web submission and payment procedures without help, and thus I'm more comfortable with the whole idea now.) – Charles Jun 22 '17 at 21:16
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    @Charles you might want to ping Eric Shain in chat--he has ~120 patents and could probably give you some advice on whether to self file or not. Most patent attorneys I consulted with (which was a lot, due to the nature of my patent, and the ultimate realization I needed a specialist,) noted that provisional documents are very forgiving in that nothing is in stone in the provisional. Some advised skipping the expense of an attorney for the provisional. However, no one advised doing the nonprovisional without an attorney, even my advisors who had no direct financial incentive. – DukeZhou Jun 22 '17 at 21:22

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