Evaluating whether the invention entails an inventive step is a prerequisite for patentability. It is a necessary condition, a cardinal step, in the patenting process. It ensures that patents are granted only for inventions that go beyond what would be obvious. Patent law provides for a hypothetical legal standard to evaluate the patentability of an invention.
Under the US laws, it is required to determine whether the new invention is easily achievable by someone already skilled in the art. A "person having ordinary skill in the art (PHOSITA)" is a legal construct to assess inventiveness. PHOSITA is a fictional, imaginary person possessing average skill and knowledge in the relevant technical field of invention and serves as a reference point for patent examiners and courts.
A central question in patent law is whether an invention is an obvious or trivial advancement over existing technology (the "prior art"). A patent cannot be granted if the invention would have been obvious to a PHOSITA at the time it was filed.
The examiner uses the PHOSITA standard to determine if the claimed invention is merely an exercise of ordinary creativity rather than a true innovation. Therefore, the standard helps evaluate whether the invention is patentable and entails an inventive step.
A PHOSITA is a hypothetical person who: (a) has normal skills and abilities typical for the field, not the extraordinary insight of a genius or creativity of an inventor; (b) is aware of all common, publicly disclosed knowledge and technology in the relevant field at the time the invention was made; (c) despite being knowledgeable, can only perform routine work; and, (d) cannot think laterally or inventively or make non-obvious leaps.
The PHOSITA’s skills depend on the field and technology of the specific case. For complex inventions, a team of skilled practitioners may be deemed as the ‘person’. The purpose of this legal fiction is to provide an objective test and prevent inventors from monopolizing logical, routine advancements that are simply extensions of existing art.
In some jurisdictions, such as, India, this notional assessment is that of a person simply with “skill in the art (SITA)” and not with either ‘ordinary’ or ‘average’ skill. If the invention is obvious to such person with SITA in the context of what is widely-known and well-recognized in the field, then it fails the inventiveness test.
The patent application's description must be clear and complete enough for a SITA/PHOSITA to make and use the invention without "undue experimentation". This ensures that the public receives sufficient instruction in exchange for the temporary patent monopoly.
During patent litigation too, the SITA/PHOSITA is often used to determine if a competitor's product is an "equivalent" of the patented invention. This threshold standard weeds out trivial patents from cluttering the innovation landscape and encourages meaningful R&D in the ecosystem.
At BLAZE VENTURES, we have elaborate processes and qualified professionals for assisting innovators and enterprises to assess and ratify patentability of the ideas, innovations and inventions.
