By Aimee L. Lamaute & Carlyn A. Burton
In Dental Monitoring SAS v. Align Technology, Inc.[1], the U.S. Court of Appeals for the Federal Circuit addressed the crucial question: under what circumstances can a patent or published application be assigned the earlier filing date of a provisional application for purposes of qualifying as prior art under AIA 35 U.S.C. § 102(a)(2) and § 102(d)(2). The court held that the provisional application must provide written description support under § 112(a) for at least one published claim of the corresponding reference before the reference is entitled to the earlier filing date of the provisional application. As a result, the court vacated the Patent Trial and Appeal Board’s previous obviousness decision, thus rejecting the Board’s broader standard of prior art determination.
Dental Monitoring owns U.S. Patent No. 10,755,409, which was challenged by Align Technology in an inter partes review (IPR). The Board determined that the challenged claims were obvious based on a combination of three references: Salah, Carrier, and Maninis; however, Dental Monitoring argued that Carrier did not qualify as prior art to Dental Monitoring’s patent. Significantly, the effective filing date of the ’409 patent fell between the filing date of Carrier’s provisional application and the filing date of Carrier’s non-provisional application. Thus, the Carrier reference qualified as prior art only if it was entitled to the earlier filing date of its provisional application under AIA § 102(d)(2). In the Patent Trial and Appeal Board during the IPR (and in the appeal), Dental Monitoring argued that, according to the Federal Circuit’s decision in Dynamic Drinkware, LLC v. National Graphics, Inc.[2], Carrier could only obtain its earlier provisional filing date if at least one claim of the non-provisional patent was supported by the provisional application’s written description in accordance with the requirements of 35 U.S.C. § 112(a). The Board disagreed.
Relying instead on its own precedential decision in Penumbra, Inc. v. RapidPulse, Inc.[3], the Board concluded that the legal standard used to determine prior art that was established in Dynamic Drinkware only applied to pre-AIA law. Thus, according to the Board, the Dynamic Drinkware written description analysis was not applicable in the present AIA case. Under the Board’s interpretation of § 102(d)(2), a patent could receive the filing date of an earlier provisional application for prior art purposes as long as certain procedural or “ministerial” requirements for claiming priority were satisfied and the provisional merely described the particular subject matter being relied upon as prior art. The Board found those requirements satisfied and treated Carrier as prior art as of its provisional filing date.
In the appellate decision, the court disagreed with the Board’s conclusion and held that the statutory language of §§ 102(d)(2) and 119(e)(1) requires more than just compliance with “ministerial” priority requirements. As a reminder, Section 102(a)(2) provides that patents and published applications are prior art as of the date they were “effectively filed.” Section 102(d)(2) subsequently allows a reference to obtain an earlier effective filing date for the purpose of qualifying as prior art when the reference is “entitled to claim a right of priority” under Section 119. And 35 U.S.C. § 119(e)(1) states that an application is entitled to claim the benefit of a provisional application only when the invention is disclosed in the provisional in the manner required by § 112(a), which imposes the written description requirement.
With that understanding, the Federal Circuit determined that the incorporation of § 119 into § 102(d)(2) expressly conditions the entitlement to claim the benefit of the earlier filing date of a provisional application on satisfaction of the written description requirement contained in § 112(a). The court thus rejected the idea that a reference only needs to satisfy “ministerial” requirements for claiming priority to obtain the earlier filing date of a provisional application for prior art purposes. By the court’s interpretation, Congress’s use of the language “entitled to claim a right of priority” in Section 102(d)(2) was intentional and demands an actual substantive entitlement to priority, rather than an applicant’s mere invocation of a priority claim.
Furthermore, the court rejected the assertion that Dynamic Drinkware could only be applied to pre-AIA law. In their arguments in support of the Board’s decision, Align had claimed that Dynamic Drinkware did not apply to AIA patents because the decision confined its analysis only to pre-AIA § 102(e) and declined to address its impact on the newly enacted AIA § 102(d). The court expressly disagreed, asserting that the Dynamic Drinkware decision merely reserved the AIA question because that question was not before the court in that case. In other words, just because the court did not address AIA in Dynamic Drinkware does not mean that a patent can be entitled to claim priority from a provisional application even when that provisional fails to adequately support a patent on the claimed invention under Section 112(a).
Accordingly, the court held that § 112(a) written description support for at least one published claim of a reference patent must be present in an earlier provisional application before the reference patent can be assigned the earlier filing date of the provisional application, for purposes of qualifying as prior art.
The Federal Circuit declined to determine in the first instance whether Carrier ultimately qualifies as prior art. Instead, because the Board had applied a different legal standard, it had not made the necessary factual determination as to whether Carrier’s provisional application provides § 112(a) written description support for at least one of Carrier’s published claims. The court therefore vacated the Board’s decision and remanded the case to the Board to make that determination under the proper legal standard.
The court’s decision makes clear that to qualify as prior art under AIA as of the earlier filing date of a provisional application, patents and publications must have at least one claim that is supported by the provisional application to which priority is claimed. The court did not address the question of whether the disclosed subject matter itself, apart from the claimed invention, that is being relied upon as invalidating disclosure must be present in the earlier filing for such disclosure to be considered prior art. However, the Federal Circuit previously addressed this question for a pre-AIA application in In re Riggs,[4] where the court held that even if a provisional application supports at least one claim, the provisional application must also provide written description support for the specific portions of the specification cited in a prior art rejection. Considering the court’s AIA interpretations in Dental Monitoring, and its alignment with pre-AIA Dynamic Drinkware, it would be difficult to envision that the court would not extend their rationale from In re Riggs to prior art under AIA.
For applicants utilizing provisional application filing strategies, particularly in crowded fields where there is a race to the patent office, inclusion of at least one claim in the provisional application that is supported and carried forward into a non-provisional application may at least help ensure subsequent patent publications at least qualify as prior art as of the provisional filing date against competitor’s applications. On the other hand, when arguing for or defending patentability of claims, there are two avenues to consider challenging patents and publications asserted as prior art under § 102(a)(2) based on an earlier filing date to which priority is claimed: (1) whether there is at least one claim entitled to priority of the earlier filed application and (2) whether the disclosure being cited is supported by the priority document having the earlier filing date.
[1] No. 2025-1752, --- F.4th ----, 2026 WL 2291181 (Fed. Cir. Aug. 10, 2026).
[2] 800 F.3d 1375 (Fed. Cir. 2015).
[3] IPR2021-01466, 2023 WL 2605070 (PTAB Mar. 10, 2023), Paper 34 at 32.
[4] 131 F.4th 1377 (Fed. Cir. 2025).
