IU McKinney Student Publishes Article with Michigan Bar IP Section
08/05/2022
IU McKinney student Luke Peterson published a scholarly paper he wrote with the State Bar of Michigan’s Intellectual Property Law Section’s publication, IPLS Proceedings. The piece is titled “The 30-Year Dissent.”
The idea for the paper, a study of the enablement requirement in patent law, came from the patent law class Peterson took at IU McKinney in fall 2021 with Duane Marks, J.D. ’10, assistant general counsel, and patent operations and policy counsel at Eli Lilly and Company. Marks teaches as an adjunct professor at IU McKinney.
The law requires a patent applicant fully enable a person of ordinary skill in the art to make and use the full scope of the invention for which a patent is desired, Peterson said. It’s a difficult requirement to meet while at the same time trying to obtain a patent that will be as broad as possible.
“The Federal Circuit decided the case of In re Wands in 1988 where the majority handed down a ruling that was problematic when viewed in hindsight,” Peterson said. “The sole dissenter, Judge Pauline Newman, seemingly had insight as to how these types of cases (i.e., biotech/pharma/etc.) should be handled. Over the next 30-plus years, her dissent in Wands was seemingly correct as the court held various patents in violation for a failure to enable the full scope of the claims. This paper details the history of the patent law system with respect to the enablement requirement and how the last 30-plus years have shown how difficult and tricky this requirement is, especially when applied to the field of so-called ‘unpredictable arts.’”
Pervin Taleyarkhan, J.D. ’13, is director of IU McKinney’s Intellectual Property Law Clinic, where she teaches as an adjunct professor. Taleyarkhan is legal counsel at Whirlpool Corporation and serves as secretary-treasurer of the IP law section of the Michigan state bar, where she manages content intake for the section’s publication. She made her clinic students aware of the opportunity and Peterson ended up taking advantage of it.
