A Person Skilled in the Art (hereinafter referred to as “PSITA”) is supposed to assess the inventive steps of a patent application. There is a lot of debate about the capabilities and abilities of a PSITA for assessing the important step of inventiveness. Therefore, R K Dewan & Company (hereinafter referred to as “RKD”), had a tête-à-tête with a PSITA in order to shed light on the various aspects of inventive step.
RKD: Please tell us something about yourself and what is the level of education that you possess?
PSITA: Well, I am a hypothetical person created by the patent laws worldwide for assessing inventive step of a patent application. I am as old as the modern patent law of a country. TRIPS agreement mandated my birth and thereafter, patent laws worldwide adopted me for assessing the inventive step of an invention in a patent application. I have been recognized in the Indian Patents Act, 1970 under Section 2 (1) (ja).
Well, specifically there is no particular level of education that I am supposed to possess. But at the same time, I can understand what is published in a technical document in question and can put two and two together.
My educational qualification has also come up for debate in some Court Cases. In the case of Kimberly-Clark Corp. vs. Johnson & Johnson and Personal Products Company, the Court stated that, I am not an inventor and therefore, placed me one step below an inventor. In the UK, in Technograph vs. Mills & Rockley, I was described as a skilled technician well versed in workshop techniques and having the ability carefully study relevant literature. I can assimilate unlimited number of documents/patent specifications but do not possess the spark of an inventor. I can make a mosaic out of available literature akin to an unimaginative person who lacks inventive capacity. Similar statements have been made in Indian jurisprudence and I shall refer to them as well as we go along.
RKD: Could you please elaborate on what does “putting two and two together” imply?
PSITA: OK, let me put it this way. Suppose, a person has filed a patent application regarding the subject matter ‘C’ and there exists in the published domain two elements ‘A’ and ‘B’ and the common sense / fundamental knowledge / published literature suggests that mixing A and B would lead to C, then I can put these elements together and conclude that the patent application which logically leads to the subject matter that A and B leads to C, is not inventive. The application shall be rejected for lack of inventive step. In case an invention follows from a single prior document based on my common sense and the knowledge of the subject matter, the invention may be considered lacking inventive step. If an invention is mere workshop improvement, it shall also be considered devoid of inventive step.
RKD: People debate about how you can be motivated to arrive at a certain invention. Could you please elaborate?
PSITA: I am happy that in one case, the Indian Patent Appellate Board (IPAB) held that, I am not a dumb and ignorant character. If there is motivation for me to go ahead and try something in order to solve a problem with assurance of reasonable success, I can certainly do that. I am referring to Glaxo Limited vs. Fresenius Kabi Oncology Limited and Allergan India Private Limited vs. Ajanta Pharma Limited Inc. case. Thus, if I am reasonably assured of success by following a certain path, I can certainly try that and arrive at the invention in question.
RKD: That leads me to another question. Can you try some experiments or carry out extensive research for attempting to arrive at an invention?
PSITA: I am not supposed to possess the mind of an inventor and do not have the luxury of indulging in elaborate experimentation. I am simply supposed to be guided by the published literature and I am supposed to be aware of the happenings in a field. I have the skills to perform experiments with the knowledge of the state of the art and nothing beyond that. I would also like to refer to the judgement of Hoffmann-La Roche Ltd & Another vs. Cipla Ltd., where the Delhi High Court averred that a PSITA in the concerned field in the art need not be an un-imaginative person or having distinct qualities. The only issue to be decided was whether for practical purposes, something was obvious to me with the prior art available at the time of patent application.
Similar sentiment was echoed in the case of Novartis AG vs. Union of India and Ors, where the Delhi Court stated that I cannot be expected to be guided by trial and error.
RKD: You referred to prior art available at the time of the patent application. What is the restriction regarding the time of an application?
PSITA: See, every patent application has a priority date. It should be kept in mind that I need to assess the inventive step based on my knowledge, understanding and the published literature which is available on the priority date. I cannot use published literature in a field in question which is available post the priority date and has a bearing on the subject matter in question. This is often referred to as “wisdom of the hindsight”.
RKD: While assessing an inventive step, do you take into consideration the invention as well? As in, can a patent application be a starting point for assessment of the inventive step?
PSITA: No, that is not the right way. For assessing inventive step, I start with the prior art excluding the patent application. I have to see and assess whether the prior art leads me to the invention. I cannot take the subject matter of the patent application and then combine it with the prior art and say this is so obvious.
The Bombay High Court in F.H. & B. Corp. v Unichem Laboratories cautioned the courts of law against the common human failing of being wise after the event. If something has been discovered by research, it shall be unfair to label the same as obvious based on my hindsight reconstruction.
RKD: In some countries, you have been identified as ‘ordinarily’ skilled and whereas in other countries you are considered to be skilled. Can we say that for assessing inventive step, a PSITA and PHOSITA (person having ordinary skills in the art) can arrive at different conclusions based on the same prior art?
PSITA: You mean to say what the difference between skilled and ordinarily skilled person is. Although, some jurisdictions define me as ordinarily skilled and some as skilled, there is practically no difference between the two. PHOSITA has been claimed to be close to an “ordinary inventor”, in terms of knowledge and information. In the case of KSR International vs. Teleflex Inc., PHOSITA was made more intelligent by the statement, “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton…In many cases, a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Thus, PHOSITA is also able to put two and two together like a PSITA. Nevertheless, I see a need for harmonizing issues of obviousness and my attributes being uniform across all jurisdictions.
RKD: PSITA has been a subject matter of litigation in all patent cases. Why is it so?
PSITA: Yes, it is right that my abilities and attributes come for discussion and argument in practically all patent cases. While one side tries to prove why something is obvious to me, the opponent tries to prove it is not so. TRIPS agreement left some flexibility in the inventive step / non-obviousness of an invention as it did not define my attributes and left it to the member countries. Since the attributes were not defined, it left the field wide open for litigation. But I believe that now the dust has settled to a large extent and many of my attributes are clear as explained in some of my answers to questions posed earlier.
RKD: Which court cases would you rate as the best for having defined your abilities and attributes?
PSITA: There are a number of cases which have shed light on my abilities and limitations. To begin with, I would like to mention Biswanath Prasad Radhey Shyam vs. Hindustan Metal Industries wherein I was labelled as a competent craftsman and could be an engineer, conversant with the subject and thoughtful. If I could be an engineer, I could as well be a skilled professional in any other field in question. IPAB, from time to time, also contributed to explanation of my attributes..
I would rate Hoffmann La Roche vs. Cipla as one of the better cases explaining some of the issues related to me. The judgement weighs what follows from the prior art and whether there is a lead / motivation for me to pick a specific compound only from a number of compounds disclosed.
RKD: Can we say that you evolved over a period of time?
PSITA: Ha! That is true. During olden times, accessibility of resources to me was limited. In the judgement of Lallubhai Chakubhai Jariwala vs. Chimanlal Chunilal and Co., the Bombay High Court, while referring to availability of prior art to a workman skilled in a particular art, said that it needs to be ascertained if a prior art document available in a public / academic institute library of India is easily accessible. Thus, even if a resource existed, its availability was also a problem. Internet has now made available every resource at the click of a mouse / keyboard. Corresponding to increased access to resources and evolution of humans, my skill and knowledge level has also increased and is bound to increase further. I also have access to machine translated documents published in various languages which was not true earlier. I am bound to be more evolved and better informed than my predecessor. The same is also reflected in the American jurisprudence wherein I am supposed to have evolved from an unrecognizable descendent of Hotchkiss’s (Hotchkiss vs. Greenwood) “ordinary mechanic” to an ordinary researcher.
I can say that I have evolved over a period of time and my march of evolution shall continue with time.
RKD: You have correctly pointed out that computer, internet and machine translation have contributed in a major way to your evolution. How do you see use of AI with respect to your evolution?
PSITA: I am aware that AI has enhanced output and productivity of humans to unimaginable levels. AI tool affords a new insight in a process and enhances human skills. That raises a question, could AI be made available to me when determining obviousness? Here, I am not speaking of using AI tool only when assessing AI related invention but to other inventions as well.
I would like to refer to a USPTO report “Public Views on Artificial Intelligence and Intellectual Property Policy,” published in October 2020. While some commented that ease of availability of AI and its ability to enhance the level of a skill of an ordinary person, it could as well be made available to a PHOSITA. However, it looks like that for the time being, it may arise only on a case-by-case basis. I may also refer here again to a statement that “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton…, the statement which I made elsewhere also in response to your question. Therefore, it appears that there is a restriction that I could not be converted into an automaton making use of AI. At the same time, if AI could be used by me for ordinary creativity, can I use that? It is difficult to provide an answer to that question.
RKD: Thank you so much. It has been a pleasure speaking to you and clarifying our doubts regarding assessment of inventive step.
PSITA: Thank you. I am happy to have been able to shed light on some of my attributes.