When it comes to the inventiveness of US patents, the term “person having ordinary skill in the art” is likely familiar to you.

In assessing patents for obviousness from a technical perspective, US examiners adopt this person’s viewpoint as a third-party perspective to determine whether the patent is obvious. In the determination of inventiveness, establishing the level of ordinary skill in the art is crucial.

The importance of this is easy to understand: setting the level of ordinary skill in the art lower than what is required by the patent may make it less likely for a person of ordinary skill in the art to come up with the invention, thus affecting the inventiveness of the patent. While “ordinary skill in the art” is defined by people, this issue involves a delicate balance between innovators and examiners. Examiners need to establish the level of ordinary skill in the technical field to ensure the fairness and reasonableness of granting patents.

In US patent examination, what is the basis for establishing the level of ordinary skill in the art? What factors can be considered when determining the level of ordinary skill in the art? This article will delve into these questions to help you understand the true meaning of ordinary skill in the art.

PART 1: Examination logic under “ordinary skill in the art”

When determining whether an invention is obvious, examiners first consider whether a person of ordinary skill in the art would be sufficiently inspired or instructed at the level of ordinary skill to make the invention obvious.

Under this logic, there are essentially two possible examination outcomes:

1、The invention is deemed non-obvious: There is not enough teaching in the prior art to lead a person of ordinary skill in the art to the invention.

2、The invention is deemed obvious: Given the level of ordinary skill in the art, individuals in the field already possess sufficient knowledge and skills to reasonably expect or deduce the invention.

Of course, in determining obviousness under Section 103 of the US patent law, in addition to the ordinary skill in the art discussed in this article, objective evidence of non-obviousness must also be considered. This evidence includes the commercial success of the patented invention, whether the invention addresses a “long-felt but unresolved need,” and more, which we will continue to share in subsequent articles.

Under the examination logic described above, it is evident that the impact of “ordinary skill in the art” on inventiveness is the most direct and fundamental.

PART 2: Who is the “person having ordinary skill in the art”?

Who exactly is the person of ordinary skill in the art? What kind of knowledge do they possess?

In reality, the person having ordinary skill in the art is not an actual person but a hypothetical individual. The US Patent Examination Guidelines in section 2141.03 state:

“The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the relevant time.”

In other words, this person should have access to all relevant technical knowledge in the field prior to the application date.

Does this seemingly encyclopedic “person” have to be a knowledgeable doctor or an industry expert?

Simply put, the knowledge and skill level possessed by a person of ordinary skill in the art is defined based on the standard practices and industry norms of the specific field of technology. This hypothetical “person” is typically considered to have an average level of technical knowledge, experience, and educational background within the field, and is not limited to a specific job title or identity.

In order to be better understood and fairly defined, the factors to consider when determining the level of ordinary skill in the art are explicitly outlined in section 2141.03 of the MPEP. We have summarized the factors that need to be considered for determining the level of ordinary skill in the art below:

1、Types of problems encountered in the field: For example, are these existing problems? If so, individuals in the field at an ordinary skill level may be more likely to arrive at the direction of the invention, making the invention tend towards obviousness.

2、Are there existing solutions to these problems in the prior art? If similar solutions already exist, it may make the invention more easily accessible to a person of ordinary skill in the art without requiring creative effort.

3、The pace of innovation in the field: If technological innovations occur rapidly in the field, the likelihood that an invention is deemed obvious is higher because practitioners in the field are likely to quickly access relevant technical information. Conversely, if innovation progresses slowly, with relatively few new technological solutions, an invention may be considered less obvious because in a slower innovative environment, practitioners may need more time and effort to discover or develop similar technologies.

4、The complexity of the technology: Generally, the more complex the technology, the less obvious it may be relative to ordinary skill levels.

5、The educational level of active practitioners in the field: This point helps in assessing whether there is sufficient guidance or teaching at that level to reach the direction of the invention. The higher the average education level in the field, the more likely individuals may be able to arrive at the direction of the invention, leading to the invention being more inclined to be considered obvious.

In conclusion, this hypothetical “person” is neither real nor static. They only have the ability to know common knowledge and, although they can possess the creative ability of a person of ordinary skill through reasonable deduction, they ultimately think like a person based on traditional wisdom in the field, rather than an innovator.

It is evident that a person of ordinary skill in the art is not a superhuman capable of creating everything. Even if the examiner’s stance is authoritative enough, the identity of a person of ordinary skill in the art cannot be defined by one individual alone.

This insight can provide us with some guidance when preparing OA response: since a person of ordinary skill in the art is not constant, we can also stand our ground and bring the unreasonable superhuman stance back to reality. Through argumentation, we can inform the examiner that our technical solution would be difficult for an ordinary person to conceive after descending from the divine realm.

Conclusion

The concept of “ordinary skill in the art” is not rigid and unchanging but defined based on the standard practices and industry norms of the technical field.

This hypothetical “person” is not an actual individual but a virtual entity with average level of technical knowledge and experience. By considering factors such as the types of problems, existing technology, innovation speed, technological complexity, and the education level of practitioners, one can better define and understand this hypothetical person.

A thorough understanding of the true meaning of “ordinary skill in the art” not only helps in making fair judgments on the inventiveness of patents but also provides innovators with another breakthrough in overcoming objections during patent examinations.