Person having ordinary skill in the art
Encyclopedia
The person having ordinary skill in the art (often abbreviated PHOSITA in the United States
), the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person is a legal fiction
found in many patent
law
s 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 Europe
an 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 criteria, 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.
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.
" used in the common law
of tort
s 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.
(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 review
ed academic journal. The date of a sanctioned prior art
can be a little later than the patent's application date:
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
.
based on how the lower court defined the capabilities of a PHOSITA. KSR v. Teleflex was decided by a unanimous Supreme Court on April 30, 2007.
Importantly, Justice Kennedy
's opinion stated, "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Although the Court's opinion acknowledged other Federal Circuit cases that described a PHOSITA as having "common sense" and who could find motivation "implicitly in the prior art
," Kennedy emphasized that his opinion was directed at correcting the "errors of law made by the Court of Appeals in this case" and does not necessarily overturn all other Federal Circuit precedent
.
Once the PHOSITA is properly defined, KSR v. Teleflex described how obviousness
should be determined:
which was applied to the facts before the Court with the following:
states in its 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."
makes explicit reference to a Person Skilled in the Art (PSITA) in the s.28.3 requirement that the subject-matter of a patent be non-obvious
.
The Person Skilled in the Art is described in Beloit Canada Ltd. v. Valmet Oy:
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".
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"
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.
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
), the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person is a legal fiction
Legal fiction
A legal fiction is a fact assumed or created by courts which is then used in order to apply a legal rule which was not necessarily designed to be used in that way...
found in many patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
s 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
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
is non-obvious
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
or not (in US patent law), or does involve an inventive step
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
or not (in Europe
Europe
Europe is, by convention, one of the world's seven continents. Comprising the westernmost peninsula of Eurasia, Europe is generally 'divided' from Asia to its east by the watershed divides of the Ural and Caucasus Mountains, the Ural River, the Caspian and Black Seas, and the waterways connecting...
an patent laws). If it would have been obvious for this fictional person to come up with the invention while starting from the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
, then the particular invention is considered not patentable
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
.
In some patent laws, the person skilled in the art is also used as a reference in the context of other criteria, for instance in order to determine whether an invention is sufficiently disclosed
Sufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
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
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
(see also doctrine of equivalents
Doctrine of equivalents
The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed...
).
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.
United States
A person having ordinary skill in the art is a legal fictionLegal fiction
A legal fiction is a fact assumed or created by courts which is then used in order to apply a legal rule which was not necessarily designed to be used in that way...
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 artPrior artPrior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
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. PatentabilityPatentabilityWithin the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
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 personReasonable person
The reasonable person is a legal fiction of the common law that represents an objective standard against which any individual's conduct can be measured...
" used in the common law
Common law
Common law is law developed by judges through decisions of courts and similar tribunals rather than through legislative statutes or executive branch action...
of tort
Tort
A tort, in common law jurisdictions, is a wrong that involves a breach of a civil duty owed to someone else. It is differentiated from a crime, which involves a breach of a duty owed to society in general...
s as a test of negligence
Negligence
Negligence is a failure to exercise the care that a reasonably prudent person would exercise in like circumstances. The area of tort law known as negligence involves harm caused by carelessness, not intentional harm.According to Jay M...
, the PHOSITA is a hypothetical individual, neither a genius
Genius
Genius is something or someone embodying exceptional intellectual ability, creativity, or originality, typically to a degree that is associated with the achievement of unprecedented insight....
nor a layperson, created in the mind of a patent examiner or the jury
Jury
A jury is a sworn body of people convened to render an impartial verdict officially submitted to them by a court, or to set a penalty or judgment. Modern juries tend to be found in courts to ascertain the guilt, or lack thereof, in a crime. In Anglophone jurisdictions, the verdict may be guilty,...
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 OfficeUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(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 review
Peer review
Peer review is a process of self-regulation by a profession or a process of evaluation involving qualified individuals within the relevant field. Peer review methods are employed to maintain standards, improve performance and provide credibility...
ed academic journal. The date of a sanctioned prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
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 physicistNuclear physics
Nuclear physics is the field of physics that studies the building blocks and interactions of atomic nuclei. The most commonly known applications of nuclear physics are nuclear power generation and nuclear weapons technology, but the research has provided application in many fields, including those...
of ordinary skill are surely different from a chef
Chef
A chef is a person who cooks professionally for other people. Although over time the term has come to describe any person who cooks for a living, traditionally it refers to a highly skilled professional who is proficient in all aspects of food preparation.-Etymology:The word "chef" is borrowed ...
of ordinary skill. An invention that involves aerodynamics
Aerodynamics
Aerodynamics is a branch of dynamics concerned with studying the motion of air, particularly when it interacts with a moving object. Aerodynamics is a subfield of fluid dynamics and gas dynamics, with much theory shared between them. Aerodynamics is often used synonymously with gas dynamics, with...
takes a different kind of "ordinary skill" from another that involves woodworking
Woodworking
Woodworking is the process of building, making or carving something using wood.-History:Along with stone, mud, and animal parts, wood was one of the first materials worked by early humans. Microwear analysis of the Mousterian stone tools used by the Neanderthals show that many were used to work wood...
.
- 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 USPQUnited States Patents QuarterlyThe United States Patents Quarterly is a United States legal reporter published by the Bureau of National Affairs in Washington, D.C. The USPQ covers intellectual property cases including patents, copyrights, trademarks, and trade secrets, from 1913 to the present.The USPQ reports case law from...
865, 868 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).
KSR v. Teleflex
The Supreme Court reversed a decision by the Court of Appeals for the Federal CircuitUnited States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
based on how the lower court defined the capabilities of a PHOSITA. KSR v. Teleflex was decided by a unanimous Supreme Court on April 30, 2007.
Importantly, Justice Kennedy
Anthony Kennedy
Anthony McLeod Kennedy is an Associate Justice of the United States Supreme Court, having been appointed by President Ronald Reagan in 1988. Since the retirement of Sandra Day O'Connor, Kennedy has often been the swing vote on many of the Court's politically charged 5–4 decisions...
's opinion stated, "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Although the Court's opinion acknowledged other Federal Circuit cases that described a PHOSITA as having "common sense" and who could find motivation "implicitly in the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
," Kennedy emphasized that his opinion was directed at correcting the "errors of law made by the Court of Appeals in this case" and does not necessarily overturn all other Federal Circuit precedent
Precedent
In common law legal systems, a precedent or authority is a principle or rule established in a legal case that a court or other judicial body may apply when deciding subsequent cases with similar issues or facts...
.
Once the PHOSITA is properly defined, KSR v. Teleflex described how obviousness
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
should be determined:
- In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.
which was applied to the facts before the Court with the following:
- The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.
European Patent Convention
The European Patent ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
states in its that "an invention shall be considered as involving an inventive step if, having regard to the state of the art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
, it is not obvious to a person skilled in the art."
Canada
The Patent Act (R.S.C., 1985, c. P-4)Patent Act (Canada)
The Canadian Patent Act is Canadian federal legislation and is one of the main pieces of Canadian legislation governing patent law in Canada. It sets out the criteria for patentability, what can and cannot be patented in Canada, the process for obtaining a Canadian patent, and provides for the...
makes explicit reference to a Person Skilled in the Art (PSITA) in the s.28.3 requirement that the subject-matter of a patent be non-obvious
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
.
The Person Skilled in the Art is described in Beloit Canada Ltd. v. Valmet Oy:
“the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibusThe man on the Clapham omnibusThe man on the Clapham omnibus is a reasonably educated and intelligent but non-specialist person — a reasonable person, a hypothetical person against whom a defendant's conduct might be judged in an English law civil action for negligence. This is the standard of care comparable to that which...
of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.”
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
Germany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
Patent Act (Patentgesetz) requires that the invention "cannot be derived by a Fachmann from the state of the art in an obvious manner".
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"
Incomplete implementations of the obviousness test
Patent examination is a costly and time consuming process. In many small countries or jurisdictions such as SingaporeSingapore
Singapore , officially the Republic of Singapore, is a Southeast Asian city-state off the southern tip of the Malay Peninsula, north of the equator. An island country made up of 63 islands, it is separated from Malaysia by the Straits of Johor to its north and from Indonesia's Riau Islands by the...
and Hong Kong
Hong Kong
Hong Kong is one of two Special Administrative Regions of the People's Republic of China , the other being Macau. A city-state situated on China's south coast and enclosed by the Pearl River Delta and South China Sea, it is renowned for its expansive skyline and deep natural harbour...
, a patent may be issued based on a prior art search report
Search report
In patent law, a search report is a report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable...
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.