Definition of PHOSITA
Revisited in a Recent Judgment
In July 2017, the Taiwan IP Court issued a judgment dismissed an administrative litigation brought by the patentee. In the court’s ruling it revisited the definition of a person having ordinary skill in the art (“PHOSITA”) during the course of determining whether the inventive step requirement has been met.
As the background of the case, the plaintiff and patentee, a fishing equipment dealer, sued Taiwan IP Office (“TIPO”) seeking to reverse an invalidity decision made by the TIPO. The Taiwanese patent at issue (‘533 patent) relates to a braided or twisted lines made from gel spun polyolefin yarns and the method of manufacture thereof. The invention can be primarily used as fishing lines in marine activities.
The third party presented several exhibits of foreign patents as prior art to challenge the inventive step of the ‘533 patent. The court found the motivation to combine relevant exhibits being obvious in light of a skilled artisan. They all disclosed technical means to modify yarn’s quality by heat stretching, suggesting that they relate with each other in the same technical field. One of the exhibits was made by the same inventor and owned by the same assignee as the ’533 patent. The only different property that ‘533 patent features is to disclose the use of a sort of “unfused” yarn. Patentee then argued that the absence of “unfused” yarn in the prior art references taught away the use of the same, and therefore said exhibit should not be cited against the patent at issue as evidence of lacking inventive step. The court found in the otherwise emphasizing that a teaching away shall be an explicit indication of a widely recognized principle, an authoritative knowledge, or the like. An absence or incomplete experiment or implicative words are not enough to teach away a combination of certain pieces of references.
As the patentee asserted, that in the previous decision the definition of PHOSITA was not particularly provided was unlawful. Particularly a PHOSITA was supposedly to be described by education and practical experience. But the court was not convinced hereby.
The court analyzed that for some technical fields that have been well developed or where combination of references is rather predictable, the level of skill of a PHOSITA can be derivable based on the information disclosed from exhibits of prior art. Such practice is quite similar to a situation that ordinarily seen in a tort, or contract dispute, or criminal case where a “good Samaritans 1” or a “reasonable person” is generally not necessarily to be defined in detail. Considering the level of technical development being seemly abstract, academic background or professional history may indeed be more objective to define a PHOSITA’s skill level. However, as emphasized, patent is only to embody the result of progressively practical skills rather than an ultimate pursuit of cutting-edge achievement in theoretical science. Practical skills may somehow weight over educational background in this regard. Therefore not in all cases a PHOSITA is describable by integration of educational background and professional history.
The court concluded that the presented exhibits were sufficient to support the necessary knowledge a PHOSITA in the present case should possess, and based on whom the court deem the fishing line of ‘533 patent can easily be accomplished in view of prior art references. ‘533 patent lacked an inventive step.
The patentee’s arguments are not compelling to the court. TIPO’s decision revoking ‘533 patent was affirmed.
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