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Skill in the art February 26, 2009

Posted by Brian Schar in General, Patent prosecution.

Yesterday, I visited the USPTO and interviewed several cases with different examiners.  During one interview, an Examiner and I were discussing what would have been well-known to one skilled in the art.  I have a degree in engineering, and I’m in-house, so I have a pretty good understanding of my client’s technology.  The Examiner has skill in his area of expertise, and was well-versed in the prior art.  But, neither of us were “one skilled in the art.”   It struck me that we were having that discussion, with neither one of us actually possessing skill in the art, as if either one of us had concrete knowledge or experience as inventors to draw upon.  We could formulate arguments, but to a large extent it was like counting angels on the head of a pin.

When a patent infringement case goes to trial, litigators who are almost certainly not skilled in the art argue patent claims to a jury which is specifically selected not to include those skilled in the art, in a courtroom presided over by a judge who would be unlikely in the extreme to have skill in the art.  At the Federal Circuit, unless there is a chemical or pharma case and Newman is on the panel, I do not believe that any judge is “one skilled in the art.”  At virtually every stage of the process after the initial invention disclosure by the inventor, the participants are arguing about skill in the art at a remove.

Perhaps this is one of the reasons why Hal Wegner is so zealous in championing the use of declarations in overcoming obviousness rejections.  Whatever their other merits, they allow the voice of somebody who actually has skill in the art to be heard.


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