Comments on: What does the PHOSITA invent? http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/ Academic commentary about patent law, i.p. law, creativity, and more Wed, 07 Jan 2009 12:15:07 +0000 http://wordpress.org/?v=2.5 By: MaxDrei http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3301 MaxDrei Fri, 01 Sep 2006 06:23:36 +0000 http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3301 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. 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.

]]> By: Joe http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3260 Joe Thu, 31 Aug 2006 01:45:12 +0000 http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3260 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 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

]]> By: MaxDrei http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3239 MaxDrei Wed, 30 Aug 2006 06:39:04 +0000 http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3239 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. 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.

]]> By: Joe http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3223 Joe Tue, 29 Aug 2006 20:28:27 +0000 http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3223 Nir, Thank you for sharing this great quotation! It shows even more clearly than the Federal Circuit's <i>Standard Oil</i> 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 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

]]> By: Nir Lifshitz http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3218 Nir Lifshitz Tue, 29 Aug 2006 19:43:56 +0000 http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3218 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. 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.

]]> By: madisonian.net » A PHOSITA for Copyright http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3211 madisonian.net » A PHOSITA for Copyright Tue, 29 Aug 2006 16:41:37 +0000 http://www.thefireofgenius.com/2006/08/28/what-does-the-phosita-invent/#comment-3211 [...] 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)? [...] […] 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)? […]

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