What Is A Provisional Application’s Prior Art Date?

By Stephen B. Schott
Provisional applications have a filing date and a publication date. How do you decide which date to use as prior art when using a provisional to invalidate or challenge a patent claim? Enter the Federal Circuit’s recent Dynamic Drinkware v. National Graphics decision.
Claiming Priority to a Provisional Patent Application
The law that governs a priority claim to a provisional patent application is a monster to parse but boils down to this: A nonprovisional patent application is entitled to its provisional application’s filing date if the nonprovisional application:
(1) was filed within 12 months of the provisional filing, and
(2) claims subject matter described in the provisional.
Of course, Congress wrote this out in an endearingly more complicated way.

35 U.S.C. 119 Benefit of earlier filing date; right of priority.
…
(e)
(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
(2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.

As a practical matter, the USPTO only checks if the nonprovisional application’s filing date is within 12 months of the provisional’s—it rarely checks whether the provisional application provides a written description of what is claimed in the nonprovisional. The USPTO leaves that task for the time when another party challenges a priority date in post-grant proceedings or litigation.
The Complication of Using a Provisional as Prior Art
The Dynamic Drinkware case brings up a wrinkle: When and how can a provisional application be used as prior art?
Dynamic Drinkware cited a patent called the Raymond patent as prior art against a National Graphics ‘196 patent involving lenticular lenses. The Raymond patent could only effectively be used as prior art against the ‘196 patent by going back to Raymond’s provisional filing date. FN1
As background to the non-patent attorney, provisional patent applications are not available to the public until a nonprovisional that claims priority to them publishes. Because of this provisional application unavailability, provisionals cannot be used as prior art against another patent or application until publication of the priority-claiming nonprovisional.
In this case, the Federal Circuit faced the question of whether the Raymond provisional could be used as prior art as of the provisional filing date against the ‘196 patent and took a route not seen before to answering “no.” The Federal Circuit adopted a two-step inquiry about whether the Raymond provisional application (on its filing date) was prior art to the ‘196 patent: (1) Determine whether the Raymond provisional provided written description to the Raymond patent claims and thus whether the Raymond patent had a proper priority claim, and (2) compare the provisional application disclosure to the ‘196 patent claims to determine invalidity (this second step was not necessary in this case).
In the first step, the Federal Circuit determined whether the Raymond provisional application had a written description that supported the Raymond patent claims. This inquiry looks to 35 USC 112’s requirement that “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” In comparing the Raymond patent claims with the Raymond provisional, the Federal Circuit found no such support existed. The court then concluded that the Raymond patent was undeserving of its provisional priority filing date.
That the Raymond patent was undeserving of its priority claim is not a point of particular interest for practitioners but the Federal Circuit’s conclusion based on it may be. The court went on to conclude the following: “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.” This conclusion has created some confusion in patent circles  and needs the following insert to be exactly proper: “A provisional application’s effectiveness as prior art [as of the provisional’s filing date] depends on its written description support for the claims of the issued patent of which it was a provisional.” The reason for the insert there is that the moment a provisional becomes publicly available, that is, on the nonprovisional publication or grant date, the provisional application becomes potential prior art on that publication—not its own filing—date.
The Federal Circuit supports my revision because it did not care about whether the Raymond provisional showed every element in the ‘196 patent:

Dynamic failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application. A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981). As Dynamic acknowledges, it provided charts to the Board comparing the claims of the ’196 patent to the disclosure of the Raymond patent and claim 1 of the ’196 patent to the disclosure of the Raymond provisional application. See, e.g., Appellant’s Br. at 22. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic’s burden.

This case will be fodder for future patent law class exams. Sorry in advance, law students.
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FN1: Only a patent practitioner would care to read this footnote. There is a little more to this because this is a Pre-American Invents Act case. The actual date conflict was between the Raymond provisional date and the ‘196 patent’s “reduction to practice” date.