Question Q213

National Group:		[please insert name of Group]

Title: 				The person skilled in the art in the context of the inventive 				step requirement in patent law

Contributors:			[please insert names of contributors]

Representative within
Working Committee:	[please insert name]

Date:				[please insert date]]

Questions

The suggested questions will try to analyze and to understand the definition of the “person skilled in the art” in three steps: the notion of the “person”, the issue of its personal “skills” and finally the “technical field” in which these skills are exercised.

1) 	The study proposed by AIPPI starts with the consideration of the person as one of the
elements of the definition of the person skilled in the art.

The Groups are therefore requested to indicate if the person skilled in the art is one, or more, person.

If a skilled person is a team of people, then are the team members all the same or may they be different in their various attributes, specifically if such a team may comprise persons from various disciplines or having different levels of qualifications?

2) 	Is the skilled person a real person (or team of persons) or a hypothetical person?

3) 	The person skilled in the art has to be analyzed in the frame of her/his personal
capacities and attributes.

At first, it is necessary to know whether and if so to which extent this person has reasoning and/or creative capacities or if he/she has merely the capacity to perform or execute the orders or instructions from other people.

Another point that can be discussed is whether the personal attributes of the person skilled in the art are the same also for other circumstances in which the person skilled in the art may have a role, such as construction of the patent or for the consideration of the sufficiency of the disclosure in the specification, even if this last point goes beyond the scope of the present study.

Finally, the question that can be discussed is the issue of knowing if the personal attributes of the person skilled in the art are the same for different IP rights covering technical creations, like patents or utility models, species, etc., if they exist in the national law.

4) 	Another important aspect of the question is to know what are the personal skills of the
“person skilled in the art”?

At least, two important issues deserve to be analyzed:

- What is the level of the qualification or skills of the person?

- And what are the nature and the scope of his/her knowledge? 

The second issue encompasses more precisely the question of the capacity to understand and to analyze the documents which are accessible to the person skilled in the art, this capacity being called “the general knowledge” and concerns the proof of the content of the “general knowledge”:

a) 	what is the scope of such knowledge in general terms? 

b) 	is such knowledge limited to the general technical training of such person?

c) 	to what extent is information in documents – articles or prior patents - 	considered to be included as part of such working knowledge? 

d) 	can such knowledge include information which the person may not have 	memorized, but can readily look up?

5) 	The question of the person skilled in the art raises also the problem of the moment of 
the evaluation of those skills: should they be all evaluated at the moment of the appreciation of the validity of the patent, i.e. at the moment of the priority date, or could they be evaluated also at the date when the patent is assessed by the Judge, for example in the infringement proceedings, where the validity can be debated jointly with the infringement claim? This may conduct to the differences of appreciation in case the notion of the equivalence is used in relation to the prior art.

6) 	The next issue related to the definition to the person skilled in the art is the technical 	domain or "the art" in which his or her skills are performed.

The first sub-question is to know if those skills are concentrated in one or several technical fields.

And the second one is related to the way the frontiers between different technical fields can be established: how this determination is assessed by the Judges or Patent Offices?

7) 	The question is also to know what is the nature of his/her competence in the technical 	field and particularly if this competence theoretical or practical?

8) 	The Groups are requested to indicate how in practice the assessment of the skills of 	the person skilled in the art is operated. What is the role of the opinion of the experts 	on this point?

9) 	Finally, the Groups are also invited to present all other questions which may appear in 	the context of the question of the person skilled in the art.

5) Future harmonization:

After assessing the national solutions, the Groups are invited to present their proposals for the possible harmonization and specifically the harmonized definition of the person skilled in the art. The object of this section is not to repeat all the questions related to the current statute of the national law, but to find the most fundamental points on which the international harmonization could be sought.

1) 	Specifically, the Groups are invited to precise on which points they see the particular 	need of the international harmonization on the issue of the person skilled in the art.

2) 	The Groups may indicate if the “person skilled in the art” standard should be 	assessed as a hypothetical model or on the contrary appreciated in concreto?

3) 	Should the skills of the “person skilled in the art” be only to execute other person 	orders or should they be creative and both practical and theoretical?

4) 	Should the art in which the skilled person intervene be of only one discipline, or 	should it cover several technical fields?

5) 	The Groups are also invited to present all other suggestions which may appear in the 	context of the possible international harmonization of the definition of the person 	skilled in the art.

Note: It will be helpful and appreciated if the Groups follow the order of the questions in their Reports and use the questions and numbers for each answer.

December 2009