August 7, 2019 |

The Odd Provisional as Prior Art

In general, the effective filing date for invention priority of a patent or patent application publication is that of the earliest application to which benefit is claimed that satisfies the written description and enablement requirements of 35 U.S.C. § 112(a). Similarly, a patent or published application generally may be prior art against another patent or patent application as of the purported prior art’s effective filing date. Finding the prior art date is simple when the effective filing date of the reference is based on the earliest filing date of an identical patent application. The question is more complicated when the prior art date alleged is the filing date of a provisional application.

The Court of Appeals for the Federal Circuit answered the question in Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) with respect to a “prior art” patent that claimed the benefit of a provisional application. In Dynamic Drinkware, the Federal Circuit held, “A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” Id. at 1382 (emphasis added).

In the subsequent case of Amgen v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017), the Federal Circuit extended Dynamic Drinkware to published applications – at least in dicta. The court held that the purported references were not prior art as of their provisional filing dates because “Appellants ... did not proffer any evidence showing that the provisional applications ... satisfy the written description requirement for the monoclonal antibodies claimed in the PCT applications [or] evidence that the claims of the PCT applications were enabled by the provisional application.” Id. at 1381.

In the wake of Amgen, the USPTO issued a Memorandum explaining that the “critical reference date” for a patent or published application may be the filing date of the provisional application “only if at least one of the claims ... is supported by the written description of the provisional application.” (bold emphasis in original; italics added). Parenthetically, neither Dynamic Drinkware nor Amgen states that only one claim need be supported (both refer to “the claims”), although Dynamic Drinkwater may suggest that one claim is enough.

The PTO made a point of limiting its interpretation of Dynamic Drinkware and Amgen to pre-AIA inquiries. Those holdings, however, do not suggest different treatment under the rules of the AIA. Notably, however, the MPEP seems to add conditions for AIA matters:

2127 Domestic and Foreign Patent Applications as Prior Art


Abandoned Applications Disclosed to the Public Can Be Used as Prior Art

... However, the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent or U.S. patent application publication may be relied on in a 35 U.S.C. 102(a)(2) ... rejection based on that patent or patent application publication if the disclosure of the abandoned application is actually included or incorporated by reference in the patent. (Emphasis added.)

Apparently it is no longer necessary in the PTO for the provisional application to support any claims of the patent application publication or patent to be prior art for AIA cases.

Recently, a petition for certiorari was filed in Ariosa Diagnostics, Inc. v. Illumina, Inc. , S. Ct. No. 18-109. Ariosa’s petition asserted that a published patent application should be available as a reference as of its provisional filing date, stating quite reasonably that otherwise, “unless Petitioner [Ariosa] showed adequate support for the unissued and unexamined claims in a published patent application, Petitioner could not challenge Respondent’s [Illumina’s] patent based on disclosures in that application that traced back to an application filed before Respondent’s own application. In other words, Respondent could keep its patent even though it was not the first inventor.” (Emphasis in original.)

On June 24, 2019, cert. was denied in Ariosa, which leaves numerous open questions besides whether a published application may be prior art as of its provisional filing date: Are Dynamic Drinkware and Amgen applicable in AIA matters? Which claims of a published application require provisional support? If we must look to the published claims, is it possible for the published application to be prior art as of its provisional date while its ensuing patent (with different claims) is not? How should we consider a published application that does not support its own claims but claims a provisional that does? Different strategies may present themselves depending on the answers to these questions. A thoroughly drafted provisional application that can stand as a nonprovisional will be best positioned to take advantage as cases develop.


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