A NERD BY ANY OTHER NAME

Last night, in the sumptuous surroundings of the Middle Temple Hall, the IPKat was privileged to enjoy the company of Lord Justice (Sir Robin) Jacob, when he chaired the October Debate of TIPLO (the Intellectual Property Lawyers' Organisation). Sir Robin was warmly commending him to read his judgment in a patent case decided last May, Rockwater Ltd v Technip France SA (formerly Coflexip SA). The validity of a patent depends upon it possessing "inventive step", that is to say, that a "man skilled in the art" could not have made the invention himself other than through the use of some inventive or creative faculty. In his judgment Sir Robin says:

"The "man skilled in the art" is invoked at many critical points of patent law. The claims of a patent must be understood as if read by that notional man – in the hackneyed but convenient phrase the "court must don the mantle of the skilled man." Likewise many questions of validity (obviousness, and sufficiency for instance) depend upon trying to view matters as he would see them. He indeed has statutory recognition – Arts. 56, 83 and 100 of the EPC expressly refer to "the person skilled in the art."

It is settled that this man, if real, would be very boring – a nerd. Lord Reid put it this way in Technograph v Mills & Rockley [1972] RPC 346 at p.355 : "… the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a "mosaic" out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity."

The no-mosaic rule makes him also very forgetful. He reads all the prior art, but unless it forms part of his background technical knowledge, having read (or learnt about) one piece of prior art, he forgets it before reading the next unless it can form an uninventive mosaic or there is a sufficient cross-reference that it is justified to read the documents as one.

He does, on the other hand, have a very good background technical knowledge – the so-called common general knowledge. Our courts have long set a standard for this which is set out in the oft-quoted passage from General Tire v Firestone Tire & Rubber [1972] RPC 457 at 482 which in turn approves what was said by Luxmoore J in British Acoustic Films 53 RPC 221 at 250. For brevity I do not quote this in full – Luxmoore J's happy phrase "common stock of knowledge" conveys the flavour of what this notional man knows. Other countries within the European Patent Convention apply, so far as I understand matters, essentially the same standard.

The man can, in appropriate cases, be a team – an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned. None of the above is controversial. However, sometimes the requirement that the skilled man be uninventive is used by counsel for a patentee in an attempt to downgrade or dismiss the evidence of an expert called to say that a patent is obvious – "my witness is more nerdlike than his" is the general theme. I do not find this a helpful approach. It is frequently invoked and Mr Waugh QC invoked it in this case in an effort to downgrade Rockwater's expert evidence on obviousness given by Professor Witz. Mr Waugh said his witness, Mr Nash was more appropriately qualified than Professor Witz, that the latter, because he had patents in his name "was of an inventive turn of mind."

Now why is this so important? It's because Lord Justice Pill took exception to Sir Robin's use of the word "nerd". In his very short judgment he said:

As to the "man skilled in the art", he is described by Jacob LJ as a 'nerd' (paragraphs 7 and 11) and as "not a complete android" (paragraph 10), which suggests that he is part of the way to being an android. A 'nerd' is defined in the Concise Oxford Dictionary (10th Edition 1999) as "a person who lacks social skills or is boringly studious" and an 'android', in the same work, as "(in science fiction) a robot with a human appearance". I hope that those working in this field will not regard "men skilled in the art" as figures from science fiction who lack social skills. Jacob LJ, will think me less than supportive of the development of the language of the law but I do respectfully prefer, for its clarity, Lord Reid's terminology cited at paragraph 7 of the judgment".

The IPKat overheard a suggestion that the true definition of "nerd" is "anyone who looks up the word 'nerd' in a dictionary. But, setting that thought aside, the IPKat is curious to know if his readers share his feeling that a nerd is really something quite different: a person who prefers the company of his computer and his reference books to that of humans and who rejoices in the finer points of technology for their own sake rather for the benefit they may bestow upon mankind. So, if you have any thoughts on the matter, please post them below.