Person having ordinary skill in the art
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The person having ordinary skill in the art (often abbreviated PHOSITA in the United States), the person skilled in the art or the man skilled in the art is a legal fiction found in many patent laws throughout the world. This fictional person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. He or she mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not (in US patent law), or does involve an inventive step or not (in European patent laws). If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.
In some patent laws, the person skilled in the art is also used as a reference in the context of other criterions, for instance in order to determine whether an invention is sufficiently disclosed in the description of the patent or patent application (sufficiency of disclosure is a fundamental requirement in most patent laws), or in order to determine whether two technical means are equivalents when evaluating infringement (see also doctrine of equivalents).
In practice, this legal fiction is a set of legal fictions which evolved over time and which may be differently construed for different purposes. It may be said that this legal fiction basically translates the need for each invention to be considered in the context of the technical field it belongs to.
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[edit] United States
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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))
[edit] 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.
[edit] 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).
[edit] 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
- the educational level of the inventor;
- type of problems encountered in the art;
- prior art solutions to those problems;
- rapidity with which innovations are made;
- sophistication of the technology; and
- 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).
[edit] The Federal Circuit
In the last twenty years, the Court of Appeals for the Federal Circuit has dramatically limited the application of PHOSITA in its obviousness analysis. In a number of cases, the Federal Circuit only invalidated patents for obviousness when there was evidence in the prior art that presented a "suggestion or incentive" to combine the prior art. ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577 (Fed. Cir. 1984). This is known as the "suggestion test." Under the suggestion test, a PHOSITA's ability to reason two prior art references together does not matter. As a matter of law, the "suggestion test" finds no support in §103.
In fact, in an earlier Supreme Court decision, the court seemed to reject such a "suggestion test." In Graham v. John Deere Co., 383 U.S. 1, 9 (1966), the court rejected an argument that noted "nothing in the prior art suggest[s]" a "unique combination of these old features" in the claimed invention. However, since the Federal Circuit's invention of "suggestion test," the Supreme Court has yet to hear a case on obviousness.
This issue may change as a petition for certiorari has been filed in the KSR v. Teleflex case.
[edit] 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.
[edit] European Patent Convention
The European Patent Convention states in its Article 56 EPC 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."
[edit] 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]
[edit] 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.
[edit] Notes and references
- ^ ("... wenn sie sich für den Fachmann nicht in naheliegender Weise aus dem Stand der Technik ergibt.", Art. 4 of the Patentgesetz).
- ^ "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)
