Person having ordinary skill in the art

From open-encyclopedia.com - the free encyclopedia.

A person having ordinary skill in the art (PHOSITA) or the person skilled in the art is a legal fiction defined in the Patent Act of the United States. If something can be invented by this person or if a problem can be solved by this person, the particular invention is not worthy of patent protection or, in other words, does not pass the obviousness or inventive step test.

In practice, PHOSITA is a set of legal fictions evolved over time. Since the obviousness of an invention is a basic question to ask when awarding a patent, similar tests can be found in many patent laws.

US Patent law

A person having ordinary skill in the art is a legal fiction defined in the Patent Act of the United States. The PHOSITA is a test of "obviousness" which is one of the largest gray areas in patent law.

A patent may not be obtained though the invention ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. (35 U.S.C. § 103 (A))

Comparison

Quite similar to the logic of "reasonable person" used in the common law of torts as a test of negligence, the PHOSITA is a hypothetical individual, neither a genius nor a layperson, created in the mind of a patent examiner or the jury to see if a claimed invention is too obvious to be patented.

Creation

During the examination of a patent application, the examiner tries to find out if that invention has already been invented by another person. If so, the patent application will be returned to the applicant to be narrowed or modified. If not, the examiner will bring out the PHOSITA test to check if that invention is so obvious that people in the trade will invent it with or without patent applicant's efforts. In the end, if the examiner can not discover a piece of prior art that may lead the PHOSITA to the invention, the United States Patent and Trademark Office (USPTO) is required by statute to award that applicant a patent.

It is well known that it may take a few months or a couple of years for a paper to be published in a peer reviewed academic journal. The date of a sanctioned prior art can be a little later than the patent's application date:

Examiner properly relied upon prior art publication in rejecting claims for production of [certain antibodies] ... under [35 U.S.C. § 103], even though publication itself is not prior art against present claims, since publication establishes level of ordinary skill in art at and around time of present invention. Ex parte Erlich, 22 USPQ.2d 1463 (Bd.Pat.App. & Inter. 1992).

Capacity

The term "ordinary skill" is not rigidly defined. The requirements of a nuclear physicist of ordinary skill are surely different from a chef of ordinary skill. An invention that involves aerodynamics takes a different kind of "ordinary skill" from another that involves woodworking.

Factors that may be considered in determining level of ordinary skill in the art include

1. the educational level of the inventor;
2. type of problems encountered in the art;
3. prior art solutions to those problems;
4. rapidity with which innovations are made;
5. sophistication of the technology; and
6. educational level of active workers in the field.

Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).

The PHOSITA redux

Because patent examiners are usually under very heavy workloads, they may not be able to look beyond the patent database and a few other frequently consulted sources. From time to time, patents regarded as obvious by people in the trade are patent protected. Some holders of these questionable patents will file lawsuits against their competitors. If the defendant can prove the existence of a prior art that can render the patent obvious before the patent's application date, the patent will be invalidated.

In the patent litigation, the accused infringer may first claim that he/she did not infringe the plaintiff's patent. If the court finds otherwise, the defendant can still claim that patent as obvious. If the court decides that a person having ordinary skill in the art can invent that same thing, the patent is invalidated and the defendant wins. From then on, everyone, not just the plaintiff, can use the formerly patented invention without paying any license fee.

One of the frequent criticisms of software patents is the large number of patents which seem to violate the PHOSITA standard, but which are nevertheless granted by the US Patent Office and other countries' patent offices, presumably due either to overworked or underqualified patent examiners, or due to deficient process in analyzing whether an invention is non-obvious.

Example

Wilma's invention, Bedrock Patent No. 000,001

Fred's invention (patent pending)

Wilma Flintstone invented the rock wheel (Bedrock Patent No. 000,001). In her patent application, she explicitly said the wheel has to be made of stone. Highways in Bedrock were not paved well. It will be helpful if each people drives a roller to work.

Fred Flintstone saw his wife's wheel and reinvented the exact same round thing. Only this time he used a section of timber instead of rock. He filed an application to the Bedrock Patent Office. The patent examiner, Barney Rubble, wisely noticed there once was a similar but slightly different invention (prior art). This time our beloved Barney has to come up with a PHOSITA to see if Fred's invention deserves a patent.

What should an ordinary stone age automobile builder know? Barney has to decide what other things an automobile builder would do in cold winter days when the stone car company is closed due to the heavy snow.

Bedrock Patent No. 000,002	Bedrock Patent No. 000,003	Bedrock Patent No. 000,004
Bedrock Patent Nos. 000,005 to 000,011

To his astonishment, poor Barney learned the cold fact that Erich von Däniken was right. He found Fred's invention quite obvious to the imaginary PHOSITA. So he established a prima facie case of obviousness. The burden of proof of non-obviousness shifted to poor Fred who was just as speechless as a piece of lumber. He failed to prove why that PHOSITA could not invent a wooden wheel from Wilma's rock wheel. Under the preponderance of the evidence rule, the Bedrock Patent Office refused to award Fred a patent.

Europe Patent Convention

The European Patent Convention states in its article 56 [1] that "an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art."

Elsewhere

Practically all patent legislations disallow the patentability of something obvious. Hence, it is no surprise that the laws of other countries have similar formulations.

For example, the German Patent Act (Patentgesetz) requires that the invention "cannot be derived by a Fachmann from the state of the art in an obvious manner".¹

The word Fachmann (an ordinary German word meaning somebody who has professional knowledge in a field) is made specific by ständiger Rechtsprechung (usual court opinion) as a "specialist with average knowledge and talent whom one would ordinarily ask to seek a solution for the (objective) problem the invention deals with"²

¹ ("... wenn sie sich für den Fachmann nicht in naheliegender Weise aus dem Stand der Technik ergibt.", Art. 4 of the Patentgesetz).

² "Sachverständiger mit durchschnittlichem Wissen und Können, den man üblicherweise mit der Lösung der (objektiven) Aufgabe der Erfindung betrauen würde" (stRspr - BPatG Mitt. 84, 213, T 32/81 Abl. 1982, 225)

Incomplete implementations of the obviousness test

Patent examination is a costly and time consuming process. In many small countries or jurisdictions such as Singapore and Hong Kong, a patent may be issued based on a prior art search report made by a sanctioned international searching authority. Even though these patents were not prosecuted before issue, in case the patentee files a lawsuit against an accused infringer, the patent's validity will still be tested for its obviousness in the court.

External links

• M.P.E.P. Section 2141.01, Scope and Content of the Prior Art
• Law - Obvious to Skilled Person
• PHOSITA weblawg
• How to Apply a Patent in Hong Kong (an example of cost-saving ways of patent granting)