Trilateral Project 24.1-Biotechnology 056

"A person having ordinary skill in the art to which the invention pertains" (referred to as "a person skilled in the art" hereinafter) means a hypothetical person:
who has ability to use ordinary technical means for research and development (including experimentation, analysis, manufactures etc.);
who has ability to exercise ordinary creative ability in selecting materials and changing designs; and
who is able to comprehend as his own knowledge all technical matters in the state of the art (see note below) in the field of to which a claimed invention pertains at the time of filing of a patent application.

In addition, a person skilled in the art is supposed to be able to comprehend as his own knowledge all technical matters in the field of technology relevant to a problem to be solved by the invention.

(Note): "The state of the art" at the time of filing of a patent application is constituted of inventions publicly known or publicly worked in Japan, inventions described in a publication distributed in Japan or in foreign countries, common general knowledge and other publicly known technical matters (i.e., technical knowledge and information etc.) (Implementing Guidelines I-2-2.1(3))

On the other hand, Patent Law Section 36(4) means that "the detailed description of the invention shall be described in such a manner that a person who has ability to use ordinary technical means for research and development (including comprehension of document, experimentation, analysis and manufacture) and to exercise ordinary creative activity in the art to which the invention pertains can carry out the claimed invention on the basis of matters described in the specification (excluding claims) and drawings taking into consideration the common general knowledge as of the filing". (Implementing Guidelines I-1-3.2)

Therefore, when satisfying the enablement requirement, the range of knowledge that one can rely on is limited only to "the common general knowledge as of the filing (technologies generally known to a person skilled in the art or matters clear from empirical rules )". As supported to this, when denying the inventive step, one can rely on all the state of the art as of the filing including common general knowledge. In other words, in determination on enablement requirement, it is not required for such a person to possess all the knowledge in the technical field to which an invention pertains reflecting the state of the art as of the filing. The level of the "person skilled in the art" in determination on enablement requirement is different from that in determination on inventive step in this point.