What does the PHOSITA invent?
Last week, the briefs on KSR’s side of the Supreme Court’s upcoming nonobviousness case, KSR v. Teleflex, hit the Court … and the blogs.
One question that a party, and the Court, should answer is, “What kind of obvious inventions does the PHOSITA make?” Put another way, “What does the PHOSITA invent?” If we can answer this question in general terms, we’ll have reference point for determining whether a given invention would have been obvious or not.
KSR’s brief on the merits, in my favorite passage in the brief, answers the question this way:
That which is “obvious” to the statutory “person having ordinary skill in the art” includes far more than what a skilled person might be motivated to make at a given point in time. The statutory person having ordinary skill in the art is deemed by law to know how to deploy existing technology for its known uses and capabilities, and to know what a “mere aggregation” of pre-existing components will comprise. These are the premises behind the Court’s repeated holdings that a patent cannot rightly issue for “a combination which only unites old elements with no change in their respective functions.
KSR Merits Brief at 26.
In my post of May 30, offering a framework for analyzing nonobviousness, I began from a similar premise:
People of ordinary skill in an art come up with new inventions all the time. If they didn’t, we wouldn’t need (or want) a nonobviousness requirement to thresh the big-advance-wheat from the little-advance-chaff. I therefore begin from the premise that the person of ordinary skill in the art — any art — has a basic ability to creatively recombine and reconfigure the basic building blocks, or elements, in her art. When doing so, the POSITA recombines and reconfigures the building blocks according to their typical functions and roles (as well as any functions the art may expressly suggest, although such express suggestion isn’t necessary, and may not even be that common). So far as I can tell, getting the POSITA’s baseline creative ability right is the single most important step in the analysis, and getting it wrong is what, in the view of many, has sent the Federal Circuit so far astray. [Note: This basic creative ability is what the Federal Circuit’s suggestion test improperly denies to the PHOSITA. By doing so, the Federal Circuit has effectively cut the nonobviousness requirement back to a supernovelty requirement.]
[…] Over at The Fire of Genius, Joe Miller has a series of posts, inspired by the briefs in KSR International v. Teleflex, on the practical meaning of patent law’s PHOSITA standard: “What does the POSITA invent?” Part I, Part II, Part III, and Part IV. The essential thrust of the whole argument is that the Federal Circuit’s “suggestion” understates the extent to which a skilled artisan knows how to manipulate the tools of a given field to combine, recombine, and reconfigure existing technologies. But read the whole thing. And can someone please settle, once and for all, whether the proper phrase and acronym is PHOSITA (Person Having Ordinary Skill in the Art) or POSITA (Person of Ordinary Skill in the Art)? […]
Pingback by madisonian.net » A PHOSITA for Copyright — August 29, 2006 @ 9:41 am
Hi.
I really enjoy your blog. On the subject of obviousness, this is one of my favourite quotes from a Canadian Patent Law case (Judge Hugessen, Beloit v Valmet):
“The classical touchstone for obviousness is 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 Clapman omnibus of patent law) would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy”
Thus, in Canadian law, the ordinary worker, or POSITA, or whatever you call him, is NOT inventive in any way, shape or form.
Comment by Nir Lifshitz — August 29, 2006 @ 12:43 pm
Nir,
Thank you for sharing this great quotation! It shows even more clearly than the Federal Circuit’s Standard Oil decision that the PHOSITA is viewed as, in effect, an autistic savant.
What sense, I keep asking myself, does it make to use a construct like this as the baseline for determining the minimum necessary amount of inventiveness for patent protection?
Joe
Comment by Joe — August 29, 2006 @ 1:28 pm
Joe, I would say it makes perfect sense because it sets up a test that can be used to achieve reasonable legal certainty for those who are asking themselves “Will this published patent application eventually give rise to a valid in-force claim that embraces what I plan to do”.
For that question to be answerable you need a clear law of novelty, and an objective test for obviousness, and first to file. Canada and Europe are of one mind on this.
Why do you need a law of novelty, in addition to a law that prohibits patenting what is obvious? To filter out all those who, although independently inventive as of their PTO filing date, were not the first to the PTO. Crucial to legal clarity is to keep novelty and obviousness as rigorously separate concepts.
Comment by MaxDrei — August 29, 2006 @ 11:39 pm
Max,
I agree that we want the novelty and nonobviousness inquiries to be separate.
An old invention, even if newly made by the applicant before us, shouldn’t be patentable. And this is so, for me, not merely because it helps me figure out who is first to the PTO. Rather, it is important to deny patents to old inventions because granting a patent on what is already old would withdraw something from the public domain without any offsetting benefit for doing so.
And even a new invention shouldn’t be patentable, if all it represents is an invention that would have been obvious to one of skill in the art. As you say, this should be a rigorously separate concept.
What I criticize in thinking like we see in the Canada case, Beloit, is that it turns the PHOSITA into, frankly, a grotesquely incapable nonartisan. It is simply not the case, in any art of which I’m aware, that a person of ordinary skill in that art is completely stumped by a situation that calls for even the smallest modicum of creativity. An artisan stumped in this way would be fired his first morning on the job. Ordinary artisans, so far as I’m aware, are expected to engage in routine recombination and reconfiguration of the stock items in their art’s basic toolkit, deploying the stock items according to their basic functions and traditional roles. This type of novel recombination is invention; it’s simply obvious invention. Why deny it with a PHOSITA construction that is disfigured out of all recognition?
Joe
Comment by Joe — August 30, 2006 @ 6:45 pm
Thanks Joe. My point on novelty is that an obviousness test is all one needs to deal with prior published state of the art. If the claim embraces some of that, an obviousness standard is all we need,to kill the claim. Novelty is needed for another reason, to select who gets the patent, out of rival Applicants none of whom prior-published the others.
My view of “invention” is one that doesn’t extend to what belongs to the routine work of uninventive skilled artisans like, for example, routine optimisation of materials, process conditions or product dimensions. I am intrigued by your division of inventions into obvious ones and non-obvious ones. What is lying in the road (ob Via) might be alleged to be an invention but, when it is found out indeed to be lying in the road of routine artisan activity, it can no longer accurately be termed an “invention”.
So, I struggle to agree with you that the definition of the notional addressee is any strain on the imagination. And, anyway, provided an artifial construct delivers legal certainty, in patent litigation, it is a price worth paying. I can’t imagine an alternative set up that would deliver more certainty for folks like me, who must opine today on whether a WO or EP-A publication could ever give rise (ten years from now) to an in force and valid claim that covers the product my client has in mind to tool up to make.
Comment by MaxDrei — August 31, 2006 @ 11:23 pm