The person skilled in the art in the context of the inventive step requirement in patent law. Prefatory Statement

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1 QUESTION Q213 National Group: Title: Contributors: Representative within Working Committee: Philippines The person skilled in the art in the context of the inventive step requirement in patent law Rogelio Nicandro Allan Chu Rogelio Nicandro Date: March 31, 2010 Prefatory Statement Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines, makes reference to a person skilled in the art under the following sections: Sec. 26. Inventive Step. - An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. Sec Disclosure. - The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Sec. 61. Cancellation of Patents Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds: (b) That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or Although it is apparent from the above sections that a clear definition of a person skilled in the art is significant in the Application, Disclosure and Cancellation of a patent, there is a dearth of local jurisprudence on its meaning and scope. Considering the similarity of local patent laws to those of the United States, reference may be made to decisions of the US courts which have persuasive effect in the Philippines 1. We shall then answer the questions below based on applicable US jurisprudence. 1 Navarro and Co. vs Vailoces et al, G.R. No July 20, 2001; Banas jr. vs CA, G.R. No February 10, 2000.

2 Questions: 1. (Questions 1 and 2) Is the person skilled in the art a real person (or a team of persons) or a hypothetical person? In Standard Oil Company v. American Cyanamid Company 2, the case involved the invalidity of the Greene reissue patent due to its failure to satisfy the requirement for no obviousness. The court found that the Reppe Patent and the Watanabe article combined would allow a person skilled in the art to produce the Greene patent. In rejecting the argument of Dr Greene, that she was not aware of the said patents when she made the invention, the court defined a person skilled in the art, to wit: The issue of obviousness is determined entirely with reference to a hypothetical "person having ordinary skill in the art." It is only that hypothetical person who is presumed to be aware of all the pertinent prior art. The actual inventor's skill is irrelevant to the inquiry, and this is for a very important reason. The statutory emphasis is on a person of ordinary skill. Inventors, as a class, according to the concepts underlying the Constitution and the statutes that have created the patent system, possess something--call it what you will--which sets them apart from the workers of ordinary skill, and one should not go about determining obviousness under Sec. 103 by inquiring into what patentees (i.e., inventors) would have known or would likely have done, faced with the revelations of references. A person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which. The relevant inquiry was the court's assessment of the two prior art references. In that regard, the court specifically found that the Reppe patent discloses the use of a metallic copper catalyst to convert a nitrile to an amide. Example 2 of Reppe discloses conversion of an aliphatic nitrile to a small amount of aliphatic amide using a metallic copper catalyst. The Watanabe article teaches that a type of metallic copper, Urushibara copper, is a useful catalyst for converting at least one aromatic nitrile, benzonitrile, to its corresponding amide, benzamide. The court found that the combined teachings would have indicated to one of ordinary skill in the art that copper was an effective agent for producing a catalysis in the process of converting a nitrile to an amide F.2d 448

3 In sum, the person in question is hypothetical, not actual, and one reasonably skilled in the applicable art rather than a layperson or the court. The actual skill of the inventor or patentee is irrelevant. The true test is what would have been obvious to a hypothetical mechanic who, among other things, had the prior art in mind when he or she endeavored to solve the problem for which the patent was sought 3. As to the question of whether the person skilled in the act may be a team or group of persons, it is submitted that the nature of the person in question being hypothetical, its scope may easily be extended to a team of persons, specially if the invention is one which cannot ordinarily be made by a single person. 2. (Question 3)Is it necessary to know to which extent this person has reasoning skills or he/she merely has the capacity to perform or execute the orders or instructions from other people? Section 35.1 of RA 8193, requires that The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. This suggests that the person skilled in the art must have the ability to carry out the patented invention based solely on the disclosure made by the applicant. As such it is not sufficient that a person skilled in the art can execute orders, he must have the requisite reasoning skills to understand and implement the invention by just reading the disclosure made by the applicant. Are the personal attributes of the person skilled in the art the same for the different IP rights covering technical creations? The answer to this question is both a Yes and a No. Yes, the personal attributes of the person skilled in the art are the same but only with respect to the class of persons who must be able to carry out the invention based alone on the disclosure made by the applicant. But as to whether the personal attributes of the person skilled in the art is the same for different IP rights covering different types of technical creations, the answer is No. The person skilled in the art being a hypothetical person, the personal attributes of a person skilled in the art for each Intellectual Property right will be dependent on the technical principles peculiarly applicable to the pertinent art. 3. (Question 4) how do you determine the level of ordinary skill of a person skilled in the art? There is no definite means to determine the level of ordinary skill of a person skilled in the art, but the following factors may be considered in determining the same: (1) type of problems encountered in the art; (2) prior art solutions to those problems; (3) rapidity with which inventions are made; (4) sophistication of technology; (5) educational level of active workers in 3 60 Am. Jur. 2d Patents 198

4 the field;(6) educational level of the inventor 4. In a given case, every factor may not be present, and one or more factors may predominate 5. The determination of the level of skill is oftentimes factual, to be determined by the judge based on the circumstances of each case. 4. (Question 5) What is the moment of evaluation of the skill of a person who is skilled in the art? It must be noted that unlike decisions of the US courts which indicate that the time to reckon the skill of a person skilled in the art should be the time the invention was made 6, Sec 26 of Republic Act 8293, explicitly states that the evaluation of the skill of a person skilled in the art is reckoned from the priority or filing date of the application. 5. (Question 6) Is the technical domain of the arts limited to one or several technical fields? To reiterate, a person skilled in the art is a hypothetical person, not actual, and one reasonably skilled in the applicable art rather than a layperson or the court. The the art is likewise a general concept which may encompass only one or any number of technical fields involved in the creation of the invention. 6. (Question 7) What is the nature of his competence in the technical field and particularly if his competence is theoretical or practical? Adopting the factors provided by the court in Environmental Designs 7, the nature of the competence of a person skilled in the art may be theoretical or practical or both. It may require a specific educational level based on the active workers in the field. Or be based on the experience required for workers in the field, or both For example, in Bose Corp. v. JBL, Inc. 8, the court found that a person skilled in the art of loudspeaker design held a bachelor of science degree in either electrical engineering, physics, mechanical engineering, or possibly acoustics. He is familiar with aerodynamics, fluid flow mechanics, and acoustics, and would have worked as a loudspeaker designer for two to three years. 7. (Question 8) In Practice, how is the assessment of the skills of the person skilled in the art operated. What is the role of the opinion of experts on this point? In practice, evaluation is made by patent officers in the Intellectual Property Office. Patent officers may constitute persons of ordinary skill in the art, as 4 Environmental Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693 (Fed. Cir. 1983) 5 In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) 6 In re Epstein, 32 F.3d 1559, 40 Fed. R. Evid. Serv. 773 (Fed. Cir. 1994) 7 Environmental Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693 (Fed. Cir. 1983) F. Supp. 2d 138 (D. Mass. 2000)

5 they are of scientific competence in the fields in which they work 9. Thus, absent legal error or contrary factual evidence, factual findings of administrative agencies should be given great respect when supported by substantial evidence 10. Recommendations: It is respectfully submitted that for harmonization purposes, a person skilled in the art should in general be a hypothetical model. However, in certain specific cases, as in the Bose case (supra), a person in concreto, with well- defined qualifications, may have to be cited for a better evaluation of the technical issues in question. 9 In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003) 10 Ruvivar vs Office of the Ombudsman, G.R. No September 16, 2008.