NOVEMBER 2008
Time to reconsider the PHOSITA
Maintaining consistency and ensuring stability in the patent examination process are crucial to the issuance of quality patents. Marian Underweiser of IBM proposes one way to make the process more predictable
| One-minute read |
| US patent law sets certain standards for ensuring the clarity and completeness of patent specifications and claims. Problems arise both from incomplete compliance and from the fact that these standards are in some cases vague and not comprehensive – requirements for clear language are hard to formulate and enforce. One area where better application of existing standards would improve clarity is proper and consistent definition of the so-called person of ordinary skill in the art, or the PHOSITA. This standard is important because many determinations in patent law are made with reference to the PHOSITA, whose perspective thus provides the baseline from which they are judged. To whom is the patent obvious? To whom must the description be clear and unambiguous? Under US patent law, the hypothetical person to whom these questions are directed is the PHOSITA. But the level of skill attributed to the PHOSITA in a given art is not always applied consistently, and this often results in bad patents. |
What do patents mean? The question is not directed to the importance of patents to innovation or the economy, but to what the patent actually describes. Recent and significant attention to the patent system has been focused on issues such as obviousness and injunctions – important issues relating to the merits of an invention and the remedies for infringement. Notably absent is attention to the adequacy of the patent document – whether it clearly explains what the invention is and what rights are granted to the patentee. And yet this is arguably the most important issue in patent law, since the resolution of any other issue depends in the first instance on the patent's meaning. The issue is so important that the balance of the patent system is premised on it – in exchange for the patentee's exclusive rights, the patent document must teach the invention to the public. It is the quid pro quo that underlies any patent system.
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