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« Guest Post -- The Final Score: 2018 Drug & Biologic Patent Approvals | Main | WesternGeco L.L.C. v. ION Geophysical Corp. (Fed. Cir. 2019) »

January 30, 2019


Hey Kevin,

With all due respect, Prost is an extremely weak and SCOTUS compliant Chief Judge. She rarely "pushes back" against the nonsensical and ambiguous decisions issued by SCOTUS, especially in the patent-eligibility area. I frankly wish we still Rader as Chief Judge.

Imprateur need not be proper...?

To the comment of "the only question seems to be whether Chief Judge Prost will have a case that gives HER..." one may point out that to change this panel's decision as a matter of law requires an en banc panel, to which the Chief Judge - alone - may fare no better.

That is, unless the CAFC acts as it has acted under the "direction and guidance" of the current Chief Judge in having panels one after another simply disregard what any earlier panel may have done (vis a vis the ping pong eligibility decisions).

Judges Prost's view of the law would require inventors of inventions that they do not yet know are suitable for their intended purpose to file a potentially early and/or ineffective patent application for fear that the experimentation needed to complete the invention would bar a later filed application. The "ready for patenting" standard also bears some blame for this.

Bob Hodges,

If an inventor does not yet know if the invention is suitable for its intended purpose, that inventor -- by definition -- does not yet HAVE an invention.

You MUST possess the invention at the critical date of the filing date.

If you need to complete "X" after your filing date, and "X" is necessary for you to HAVE an invention, then you FAIL to actually have an invention at that critical date. You do NOT deserve a patent in that circumstance.

Or course, there were necessary implications to this that were understood and still committed to by Congress when it changed the game with the America Invents Act.

Nonetheless, the understanding of what entails an invention existed even before that change to the AIA! (as detailed in the intricacies of 35 USC 102(g))

At least before, if by the time you filed (possessed) you had not lapsed in your diligence, you had the possibility of "swearing behind" -- as long as your delay in filing was not an unreasonable delay (in a "proof of conception" timing battle; which battle may even include periods of time of abandonment).

Even then though - you STILL needed both conception and reduction to practice in order to HAVE an invention.

Yes, filing an application is considered a constructive reduction to practice. But the bottom line is that you CANNOT avail yourself of that constructive reduction to practice and at the same time admit that you do not have a reduction to practice (as would be the case if you attempt to say -- as you do here -- that you "do not know" or "that you need to complete some experimentation."

This is fundamental bedrock meaning of the very word "invention."

You appear to want to blame someone for something that CANNOT bear the blame as you would have it.

..and yes, this is one major reason why the Big Pharma pre-passing FDA hurdles filing of applications constitutes one major scam** on the US public.

Quite simply, filing prior to that critical knowing that you have an actual invention means that you have filed too early and that you necessarily fail to have had possession at the filing date.

No other art unit gets such a pass!

Leastwise, one that is KNOWN to be such a pass, given the number of items that routinely fail to successfully pass the FDA gauntlet.

** and yes, I do realize that I am "firing on the flag" with this view being expressed on a predominantly "medical" oriented patent law blog, but the plain fact of the matter is that if Congress wanted to allow early filing for human health reasons, they could change the legal understanding of the term "invention" to be art-unit specific or otherwise provide for filings BEFORE "invention" is actually obtained.


While Rader was no doubt much stronger, he too failed - and failed miserably to push back against the Supreme Court when that Court stepped beyond its legitimate authority (and pursued its own policy-re-writings [or scrivinings] of the statutory law that is patent law.

There is but one jurist that comes quickly to mind that had the knowledge, courage, and strength to push back. The same one that HELPED WRITE THE ACT OF 1952: Judge Rich.

Does anyone here know (actually *know*, as in “can cite a source establishing”) what powers the Chief Judge has relative to the other Circuit Judges? For example, the Chief Justice of the SCOTUS gets to decide who writes the majority opinion when the Chief is in the majority. Does CJ Prost get to assign opinions, or is that left to each panel?

Purely administrative, except that the CJ presided over the en banc court. Of course, it’s possible that “administrative” duties come with power to influence panel composition, etc.

Mr. DeLassus,

it's a bit dated, but near as I can find with a quick search:


"Having already revised how the written description requirement is applied to antibodies in Amgen v. Sanofi, the only question seems to be whether Chief Judge Prost will have a case that gives her an opportunity to revise the on-sale and public use bars in accordance with the principles and reasoning set out in her dissent."

Kevin, you left out "...and ignore the court's own precedents". I side with EG: things were better under Judge Rader.

Since Federal judges have lifetime appointments, it's impossible to know when Prost will retire, but even if it's tomorrow it won't be soon enough.

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