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Should a "Person Having Ordinary Skill in the Art" Be Defined Based on Such Person's Education and Work Experience?
Regarding the definition of "person having ordinary skill in the art (PHOSITA)" and the technical level thereof, in the 2016 Pan Zi No. 503 Judgment rendered by the Supreme Administrative Court on September 29, 2016, the Supreme Administrative Court demanded that the Intellectual Property Court "establish the knowledge level of 'a PHOSITA' based on the technical field of the patent at issue, the problems encountered by prior technology, the methods to resolve these problems, the complexity of the technology and the ordinary level of practitioners," and reversed the original judgment and remanded the case to the Intellectual Property Court.
Although the Supreme Administrative Court, in the aforementioned judgment, explained the principle of "establishing the knowledge level of 'a PHOSITA,'" the issues of 1) whether or not the courts trying the factual issues should, without exception, define the PHOSITA, and 2) how to define the PHOSITA, have not been resolved. In this regard, the Supreme Administrative Court again provided its opinion in the 2018 Pan Zi No. 589 Judgment rendered on October 11, 2018. The Supreme Administrative Court emphasized the following in such judgment:
1. The virtual person PHOSITA stipulated in the Patent Act is aimed at determining the technical level when examining the non-obviousness of a patent so as to preclude hindsight bias. Hence, the common knowledge possessed by such virtual person, the routine work he/she implemented and his/her ability to carry out the experiments, should be materialized on the bases of the prior art and other extrinsic materials of the related technical field, rather than be defined purely through the person's education and/or work experience.
2. In terms of the non-obviousness of a patent, since it is the petitioner of the invalidation action who bears the burden to prove such patent as obvious in the invalidation proceeding, it should also be the petitioner's burden to prove the technical level of the PHOSITA as of the filing date or the priority date of the patent.
The Supreme Administrative Court concluded that, as the technical level of the PHOSITA as of the filing date or the priority date of the patent has been formed by the original court through the technical content disclosed by the prior art and the evidence submitted by the appellant and no Rule of Thumb or Rule of Reason was violated, it can be deemed that the original court has defined the PHOSITA and his/her technical level.