Thursday, June 14, 2007

Story-telling, post KSR: in or out?

At the "Spring Seminar 2007" (LAIPLA) discussion of KSR v. Teleflex, one post-KSR commenter suggested the increased importance of telling a story, as one would do to a juror in a litigation context. This was in the realm of showing that one had an "extremely cool" invention.

Curiously, over at the just-n-examiner blog, one has exactly the opposite advice:

Other attorneys have talked about the 'storytelling' they used to do in the drafting of specifications, storytelling that they dare no longer do in light of the decisions being handed down by the courts these days.

Just-n-examiner does point out:

It is incredibly helpful to an examiner if there is a nice background of the invention included, and very helpful when it cites some prior art references. Placing the invention in context within the art in which it belongs almost always makes the examiner's search a whole heck of a lot easier.

IPBiz suspects that a detailed background section probably is helpful to the examiner (and probably to the attorney forced to write one), but current conventional wisdom among prosecutors counsels AGAINST writing such details. Kind of strange in a system designed to promote public disclosure of information that writers would limit presentation of helpful information and that (targeted potential) readers would avoid reading the stuff anyway (eg, all the IT people who avoid reading patents).


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