Patently Obvious or Obviously Patentable

The U.S. patent law at 35 U.S.C. §103 requires that in order for a patent to be granted for an invention, the invention must have been “non-obvious” at the time of filing. The non-obviousness doctrine requires an examination of what would be available to a person having ordinary skill in the art (“PHOSITA”). That inquiry is premised on a definition of a PHOSITA, who is a mythical person.

Historically, the actual skill level of a PHOSITA has not been argued in patent cases. In recent years, the level of ordinary skill has been considered more explicitly—there is a greater correlation between the applicable level of skill and the ease in finding obviousness. As the PHOSITA skill level rises, more inventions become obvious and therefore unpatentable. On the other hand, a PHOSITA with little education or training would have more difficulty in making connections and finding obviousness.

The Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 2007 seems to have gone further. They said (emphasis added):

A person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle…. A person of ordinary skill is also a person of ordinary creativity, not an automaton.

Ordinary creativity? What is that? The big danger is that a court may search for a PHOSITA capable of making the invention rather than simply searching for the level of a skilled worker in the area. The even bigger danger is that a court asks whether the inventor himself or herself is a PHOSITA. Under 35 U.S.C. §103(a), patentability of an invention shall not depend on the manner in which the invention was made. The “flash of creative genius” requirement has long since been abolished in the U.S. patent laws.

If you follow this line of reasoning, you also might ask whether a person of ordinary skill in an art could ever actually be an inventor of anything. This is scary. Put another way, is a PHOSITA also a person of “ordinary inventiveness”? How do we distinguish between creativity and inventiveness? Inventing is intimately linked with an inventor’s skill/education level as well as his or her creativity.

“Inventions” cannot be reserved for persons having exceptional skill in the art. That was never the intention of the patent system. There are certainly exceptional inventions — truly groundbreaking patents that begin new industries. But these are less than 1% of all patents. Most (actually, all) patents are indeed combinations of old elements assembled in a new and non-obvious ways.