Takeaway: Provisional applications may only become effective as prior art if the claims of subsequently-filed issued patent are supported by the provisional application. Prosecuting attorneys faced with 35 USC §102(e) rejections should always evaluate whether it is possible to rebut a rejection by arguing that the claims of the published application or issued patent being applied do not include any claims supported by the provisional application under 35 USC §112.
In brief, the Federal Circuit in Dynamic Drinkware held that Circuit held that an IPR petitioner did not adequately demonstrate that an invalidating reference under 35 U.S.C. § 102(e)(2) was entitled to its provisional filing date because it failed to compare the provisional application to the claims of the reference patent. Furthermore, 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.
The recent PTAB decisions in Ariosa Diagnostics and Benitec both upheld the validity of challenged patents on similar grounds, by holding the petitioner failed to prove any claim of the prior art published patent application was supported by the provisional application.
The PTAB is increasingly relying on Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) [“Dynamic Drinkware”] to dispose of Inter Partes Review (IPR) decisions. These two decisions, Ariosa Diagnostics, Inc. v. Illumina, Inc. IPR2014-01093, Paper 69 (PTAB Jan. 7, 2016) and Benitec Biopharma Ltd. V. Cold Spring Harbor Lab., IPR201600014, Paper 7 (PTAB Mar. 23, 2016), reinforce the importance of theDynamic Drinkware decision.