On Friday, February 19, 2016, Washington and Lee law professor Christopher Seaman presented a new paper at the 2016 Works-in-Progress Intellectual Property Colloquium at the University of Washington School of Law in Seattle, WA. The paper is titled “Collaboration and Patentability”.
From the abstract:
Collaboration is a hallmark of modern innovation. Patented inventions are now more likely to be the result of large-scale research projects in private industry or academia involving a multidisciplinary team of collaborators, rather than the lone tinkerer in a garage. The growth of collaborative invention is due to several developments, including increased specialization within scientific disciplines, the prohibitive costs of independent research, and the ability for far-flung researchers to collaborate via the Internet.
Although patent law has evolved to facilitate collaborative invention in several important ways, it has lagged in recognizing the shift to team-based innovation in one important respect: the concept of the so-called “person having ordinary skill in the art” (PHOSITA). The PHOSITA plays an important role in determining numerous statutory requirements for patentability, including nonobviousness, enablement, written description, and definiteness. The PHOSITA also is central to determining the scope of a patent’s claims, which greatly influences both infringement and invalidity in patent litigation.
This Article contends that the U.S. Patent and Trademark Office and the federal courts should account for the rise of collaborative invention by judging patentability from the perspective of a collaborative team, rather than a lone PHOSITA, at least in cases when the knowledge of an interdisciplinary team would be required to develop, make and/or use the claimed invention. By doing so, patent law will utilize a more realistic framework for judging patentability. Evaluating patentability through the lens of an ordinarily skilled team may raise the bar for some requirements like nonobviousness, but lower them for others like enablement and written description.