India Trademarks

2. Who can be called a person of ordinary skill in the art?

A person of ordinary skill in the art is a hypothetical person. He does not really exist in the world. The acronym used for him generally is POSITA or PHOSITA.

And so who is a POSITA?

He is a hypothetical person of ordinary skill in the subject matter. An average skilled person.

However he is deemed to know every thing in the subject matter in his field.

So he will know of all patents, all technical journal publications and would have read all the articles published in technical journals and all patent applications published or granted in all languages.

He is given the credibility and competence of an ordinary person only.

Naturally such a person does not exist except for this hypothetical assumption.

The concept of posita enables the patent office to combine the various documents that the examiner would unearth in his search for obviousness of the invention for which the patent application has been filed.

Thus the patent office can combine multiple documents and come to a conclusion that patent can not be given for the invention is obvious.

This is a common rejection made by USPTO on almost all patent applications submitted to it. You must note that patent is given only to 50% of the applications filed in USPTO as the applicants are not able to beat the rejections made by USPTO under 35 USC 103 which deals with obviousness rejections.

3. How does the patent office makes the obvious to a POSITA rejections?

The Patent office first looks for documents cited by the applicant as prior art in his patent applications (whether it is provisional or non provisional) in the background of the invention and in the detailed description of the invention. Documents that are cited here are applicant admitted prior art documents.

Then the office will combine these documents with prior art patent documents and then with prior art non patent documents.

The rejections are made by combining any number of these documents.

The only thing that is required to be noted is that the documents must have a priority date earlier than that of the application. Thus though some documents may have been published later than your patent application if their priority date is earlier to yours they can and will still be cited as prior art documents to reject your invention under ‘103 rejections.

There is a significant difference between USPTO and Indian Patent Office which you must clearly have in mind here. This difference may disappear over a period of time but at the moment it exists.

USPTO examiners have no restrictions on search capabilities including budgets. Indian Patent office does not enable the Indian Patent Examiners to search through technical literature databases which are very costly. A single document can cost you easily $35 upwards for downloading and viewing. I’m not aware of the Indian Patent Examiners being given the liberty of purchasing technical literature documents which can be made only in US dollars online while searching for patents.

Therefore unless you cite some technical journal documents in your own applications, there is no way a patent examiner in India will pull out a technical journal article to defeat your application. He just may not have the budget and the access to find out. So avoid making these disclosures in your patent applications. Review my lesson on Provisional Application again to understand the importance of this point.

In USPTO also the examiners have to complete an application within 35 hours I believe. So unless they are not able to get prior art patent documents they might not get in to the technical literature document searching part. Many examiners in USPTO are subject matter experts and are highly decorated scientists. In India the patent examiners are taken at an yearly contract renewable every year. I’m not sure if the best brains in the field would opt to become patent examiners at this stage.

All this could change in future. When I became a Patent Agent the patent office did not have a single computer to use. Today it is totally computerized and increasingly efforts are being made to digitize the whole database and the patent office is one of the highly profit making offices to the Central Government. So all this can change in future. But at the moment it is better for you to remember that unless you cite a technical journal article yourself, the patent office  may not be in a position to cite a technical article as a prior art against your application.

Popularity: 77% [?]