People Having Ordinary Skills in the Arts

39 Pages Posted: 31 Jul 2023

See all articles by Dan Traficonte

Dan Traficonte

Syracuse University College of Law

Ben Armstrong

MIT Industrial Performance Center

Date Written: July 27, 2023

Abstract

The person having ordinary skill in the art (PHOSITA) is the central legal construct on which much of patent law doctrine is built. By adopting the perspective of the PHOSITA, examiners and judges aim to objectively assess whether an invention satisfies the core elements of patentability––most importantly, whether the invention would be obvious to a PHOSITA under §103 of the Patent Act. Much debate has focused on who the PHOSITA for a given invention should be, what degree of skill they should have, and, perhaps, how creatively they should be assumed to synthesize the available prior art. What is not questioned is that the hypothetical PHOSITA should be imagined just as its name describes: a single person, and one with skill primarily in a single technological domain.

In the real world, however, innovation is not an individual enterprise. As we demonstrate, most inventions are now created by groups of people working together, and this has been increasingly true over time. Moreover, a substantial portion of groups working to develop new inventions are now multidisciplinary, with different group members employing skills from distinct technological domains. In reality, then, the primary agent of innovation is some combination of people having skills, often in several different arts. There is thus a glaring mismatch between how innovation is conceived of in patent law and how it is done in the real world. While this discrepancy is problematic for a number of reasons, the nonobviousness standard is the most significant: what is obvious to a team of people with varied expertise is often not obvious to a single person, even one of extraordinary skill.

We propose as an alternative legal construct the team having ordinary skills in the arts (THOSITA). Drawing on cross-disciplinary literature on group-based innovation, we describe what a typical THOSITA looks like for a range of innovations, and show how the construct can be used in practice to decide key questions of patentability. We then evaluate the potential efficacy of this alternative standard in accomplishing the main objectives of patent law, and describe judicial and institutional mechanisms for implementing it. We conclude by discussing the likely results of this shift away from the hypothetical individual inventor and toward the more grounded and realistic THOSITA.

Keywords: Patent law, PHOSITA, nonobviousness, innovation, teams

Suggested Citation

Traficonte, Dan and Armstrong, Ben, People Having Ordinary Skills in the Arts (July 27, 2023). Available at SSRN: https://ssrn.com/abstract=4522199 or http://dx.doi.org/10.2139/ssrn.4522199

Dan Traficonte (Contact Author)

Syracuse University College of Law ( email )

950 Irving Avenue
Syracuse, NY 13244
United States

Ben Armstrong

MIT Industrial Performance Center ( email )

77 Massachusetts Avenue
50 Memorial Drive
Cambridge, MA 02139-4307
United States

HOME PAGE: http://benarmstrong.work

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