In deciding validity of patents through the obviousness test, the term PHOSITA keeps popping up. It means "person having ordinary skill in the art" and is actually a legal fiction (assumed fact). He does not have to always exist in a case, but is taken as a guideline of skill level to determine non-obviousness. Otherwise, we would know when to determine if something is non-obvious.
It was mentioned in Patently-O that we may think that the education level of the inventor is relevant to determining the PHOSITA skill level, but it should actually be excluded. The PHOSITA is simply a skilled worker (with common sense, of course, and not a robot), and should not be considered someone capable of making the invention (someone really smart). However in the KSR case, the PHOSITA figure was further expanded to be creative when looking at prior art, at least able to think slightly out of the box. That is to say, for example, a bottle invented to store water can be used to store other things, such as flowers, but not have led to being used as the body of a water-propelled rocket launcher (a bit far-fetched I know, but I could not think of anything else).
Certainly, this definition of a PHOSITA is ambiguous depending on the case, but I believe it should be kept that way. Every case can be very different and setting a stricter definition could render it biased to or against some group of cases. Even in the legal world where the law is constantly updated based on new judgement, some things are best left untouched, lest there be no case to fight anymore.
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In my opinion, unless you have a standard for a "person having ordinary skill in the art" for pretty much all major areas of innovation, it is tough to create a standard for which cases will be determined. Therefore, if there was some way to define this that would be much cleaner when it comes to the courtroom or discussion with the examiner. For example, this could mean saying "someone with a bachelors degree in electrical engineering" as the standard for ordinary skills in hardware products.
ReplyDeleteI think with the wide number of varying industries, it may be difficult, if not impossible, to set a standard for the PHOSITA. Even if we set a standard just for one sector, different departments in the same industry could require totally different skills, and the employees also come from all sorts of educational background, or may even be lowly educated but that does not mean they do not have ordinary skill. While it could be better for a court examiner, a clear skill definition of a PHOSITA may make it extremely unfair in some circumstances. We may perhaps improve on the definition by including a certain duration of work experience, or how long before a person is considered to have ordinary skill in the art. However, the duration could differ from trade to trade still and is still flawed some way or another.
DeleteThus, while I agree that a clearer definition would be helpful in patent examination, I think the restrictions it could introduce might make it unfair for rightful claims which could get rejected as a result.
I'd just like to bring about UK's definition of "PHOSITA" is "a skilled but unimaginative worker". They introduced the term "unimaginative", which I think is slightly more precise than what we have as PHOSITA. Though I agree that it is very ambiguous in terms of determining obviousness. And with more defining terms would hinder patent examination for different cases.
DeleteThanks Rae, it is certainly interesting to know how the term PHOSITA differs in different areas. I agree that 'unimaginative' is more precise and certainly easier to determine whether than 'some creativity', but I am afraid it may mean that some obvious innovation arising from slight imagination would get approved. I do not have an example off-hand, but I do expect something like that to happen in the near future, if it has not already. On the other hand, ambiguity makes cases harder to try, but it does leave room for debate since many cases sit on the fence.
DeleteI think that purposefully having an ambiguous definition of what a PHOSITA is was an intentional move, as an explicit definition would hamper inventors. This is primarily a result of technological progress being difficult to predict; the definition of what a PHOSITA will be in the future is thus similarly difficult to predict. It seems that Roshan was advocating for a strict definition of what a PHOSITA might be; I would argue the opposite.
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