110 Iowa L. Rev. Online 29 (2024)

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Abstract

In The Ghost in the Patent System: An Empirical Study of Patent Law’s Elusive “Skilled Artisan”, Laura Pedraza-Fariña and Ryan Whalen shed helpful light on the question of how, in addressing a variety of questions in patent law, courts apply the perspectives of legally imagined people of skill in the relevant technological arts. Pedraza-Fariña and Whalen’s empirical analysis of court opinions indicates that written analysis specifically directed to these legal constructs has tended to be relatively cursory. Pedraza-Fariña and Whalen suggest not only that greater judicial engagement in this area is desirable but also that such engagement would ideally involve distinction between the perspectives for assessing (1) an invention’s nonobviousness, (2) the sufficiency of a patent’s disclosure for properly enabling the invention’s making and use, and (3) the scope of subject matter covered by the patent. Like a prior Response by Timothy Holbrook and Mark Janis, this Essay questions whether Pedraza-Fariña and Whalen have established the desirability of disaggregating the perspectives for assessing nonobviousness and enablement. On the other hand, the Essay also highlights how the U.S. Patent Act uses language to describe the perspective for gauging enablement that differs from the language used to describe the perspective for assessing nonobviousness. Whereas the Act speaks of enabling “any person skilled in the art,” the Act speaks of nonobviousness to “a person having ordinary skill in the art.” Although U.S. patent law currently treats these formulations as equivalent, one could imagine their being treated as substantially distinct, albeit not necessarily in alignment with the difference in perspectives suggested by Pedraza-Fariña and Whalen. Regardless, Pedraza-Fariña and Whalen’s contributions bring welcome attention to potential ways to reshape the assessment of multiple important questions in patent law.