Provisional Patent Applications Are Prior Art Upon Their Filing Date Except Where No Non-Provisional Patent Claims Issue or Are Not Supported by the Provisional Patent’s Original Disclosure

Takeaway: With the explosive growth of patent filings and online publications, it is critical to file your patent application promptly. 

Even after operating for half a decade under the Leahy Smith America Invents Act (“AIA”), patent practitioners often find it difficult to anticipate the evolution of case law pertaining to the conditions under which a patent may qualify as prior art as of its provisional application filing date.  This is true both with respect to post-AIA and pre-AIA statutory interpretation.    In Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) [“Dynamic Drinkware”], we encounter an example of this strange world of prior art.

In Dynamic Drinkware, the court interpreted the pre-AIA version of [35 USC] § 102, and astoundingly denied the patent-defeating effect to a disclosure of a provisional application filing date despite the fact that the relevant disclosure was found in the provisional patent application.

By way of background, an IPR-appeal was initiated for the purpose of reviewing National’s Patent No. 6,635,196 which was applied for on November 22, 2000 but claimed priority to a provisional application filed in June of 2000.  Dynamic Drinkware argued that the challenged patent was invalid as being anticipated in view of the provisional application (U.S. Patent 7,153,555, “Raymond”) that was filed in May 2000 but claimed priority back to a February 2000 provisional application filing.

Dynamic Drinkware argued that the provisional patent was substantially different from the subsequently-file non-provisional such that the provisional’s effectiveness as a prior art reference fatally suffered.  The Court agreed, finding that the claims of the issued patent could not be supported by the provisional application, and that by extension, as a general rule, provisional applications used as prior art references may be disqualified as prior art if it can be demonstrated that a provisional application lacks support for the issued claims.

In other words, a patent used as a prior art reference that claims priority to a provisional does not instantaneously benefit from the priority filing date of the provisional patent application.  Rather, the referenced patent only receives its provisional date where at least one claim of the patent is support by the provisional patent application.

As patent commentator Dennis Crouch stated, “Anyone who works with prior art knows that this setup is an oddball way to address the situation.  A patent’s disclosure for prior art purposes should not depend upon what was claimed or not, but instead should focus on what was disclosed.  My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.”  Crouch, Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications, Patently O (September 8, 2015).

With this criticism in mind, and in light of the potential for future evolution of the underlying case law, what are the best practices for practitioners and inventors to keep in mind moving forward?

As a general rule, a pending provisional patent application or an abandoned provisional patent does not qualify as “prior art” under 25 USC 102.  A provisional patent application may mature into a prior art document only if it provides thorough written descriptive supportive of at least one claim of the issued patent.   What a crazy way to consider whether a provisional patent is prior art!