Effective Filing Date Of Provisional And Non-Provisional Application Prior Art

The Court of Appeals for the Federal Circuit (CAFC; Case No. 25-1752) vacated the Patent Trial and Appeal Board (PTAB)’s decision in IPR2023-01369 (Align Tech., Inc. v Dental Monitoring SAS) that Claims 1-15 of U.S. Patent 10,755,409 (‘409) were unpatentable as obvious.

The ‘409 patent is owned by Dental Monitoring SAS and is directed to a method for acquiring and analyzing an image of a dental arch of a patient. Align Technologies, Inc. filed a petition for a inter partes review challenging claims 1-15 of the ‘409 patent. The PTAB determined that the claims were unpatentable as obvious over the combination of three references, including U.S. Patent Application Publication 2021/0068923 owned by Carrier. The effective filing date of the ‘409 patent fell between the filing dates Carrier’s provisional application and non-provisional application.

The PTAB concluded that Carrier qualified as prior art as of the provisional application’s filing date. They held that a patent receives the filing date of an earlier application if it satisfies the “ministerial requirements” of §§ 119 and 120 and describes the subject matter of relied upon and the PTAB found that Carrier’s provisional patent described the subject matter relied upon.

On appeal, the central issue was whether Carrier’s provisional application needs to provide written description support for at least one of Carrier’s published claims for Carrier to obtain the benefit of its provisional date or whether Carrier’s provisional needs to only comply with certain “ministerial requirements”.

The Court states that in plain language “AIA § 102(d)(2) provides that a patent is prior art as of an earlier effective filing date only ‘if the patent or application for patent is entitled to claim a right of priority under [§] 119’”. The Court goes on to explain that § 119(e)(1) states that a patent is entitled to claim priority from a provisional application only if the invention is disclosed in the provisional application in the manner provided by § 112(a). The Court focuses on Congress’s use of the phase “entitled to claim a right of priority”, indicating that the language requires satisfaction of requirements and does not permit a passive invocation of priority. Thus, the Court determined that the statute requires § 112(a) support for at least one of a prior art’s published claims for that reference to obtain an earlier filing date for the purposes of prior art, and not just the satisfaction of “ministerial requirements”.

The Court vacated the PTAB’s decision and remanded the case back to the PTAB to make a factual finding on whether Carrier provisional provides sufficient written description support for the claims in the non-provisional Carrier application.

Takeaway: In order to benefit from the earlier filing date of a provisional application, at least one claim of the later-filed nonprovisional application claiming priority to the provisional application should be fully described and supported by the provisional application. Oftentimes, a provisional application does not yet have all the features sufficiently described and later claimed in the non-provisional application. It is important to consider whether multiple provisional applications should be filed as the invention is further developed, until the disclosure is fully ready for a non-provisional application. In such a case, it is important that each provisional incorporates by reference each of the previous provisional applications filed.

Click here to access the 25-1752 Opinion