Claiming Priority is Not Enough
Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Fed. Cir. Aug. 10, 2026)
A patent or patent application publication, used as a reference (e.g., prior art), is prior art as of its “effective filing date,” which is typically the earliest filing date of the underlying provisional patent application, from which the patent or patent application publication claims priority. This now holds true for all patents and patent application publications used as references-only when the provisional application provides § 112(a) support (§ 112 support) for the claims of the reference (the patent or patent application publication) itself.
Support under § 112 for the one or more claims is provided when the provisional patent application describes the disclosed invention in the reference (the patent or patent application publication) in enough detail that a skilled artisan would find an adequate written description of the invention and that the inventor possessed the invention as of the provisional application’s filing date. Additionally, the party relying on the provisional application’s early filing date, the “effective filing date” of the reference, bears the burden of showing the § 112 support for at least one claim in the provisional application.
This standard now applies for all patents and patent application publications, whose corresponding patent applications were filed both pre the America Invents Act (AIA) (before March 16, 2013) and post-AIA (after March 16, 2013), as decided by the US Court of Appeals for the Federal Circuit (CAFC) in Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Fed. Cir. Aug. 10, 2026). Here, Align Technology challenged a patent of Dental Monitoring in an Inter Partes Review (IPR). Align asserted that a post-AIA reference, a patent application publication, against the challenged patent was prior art based on the reference’s underlying provisional patent application’s filing date.
The US Patent and Trademark Appeal Board (PTAB) in the IPR followed a less strict rule for post AIA patents and patent application publications, and noted that the statute for post AIA patents and patent application publications required that the reference need only be “entitled to claim” priority, and the earlier provisional application need only “describe the subject matter” being relied upon. There were not any requirements for the provisional application supporting at least one claim of the reference.
The CAFC disagreed, finding that the same standard, which applied to pre-AIA patents and patent application publications, also applied to post-AIA patents and patent application publications. The Court cited the pre-AIA case of Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), as also controlling post-AIA patents and patent application publications. The court went on to hold that a reference does not get its provisional’s filing date simply by claiming it. Rather, the provisional application from which the reference claims priority, must supply § 112 support for the claims of the reference itself, in order for the reference to possess the early filing date of the claimed priority provisional application. Additionally, the Court indicated that the party relying on the reference bears the burden of showing the proper support for the claim in the provisional application. Because the rule is a necessary condition, a reference without claims supported by the provisional does not receive the provisional’s early filing date, and rather, receives its actual filing date, which also serves as its “effective filing date.”
As a result, the CAFC remanded the case to the trial court, the Federal District Court, to hear arguments as to whether the subject provisional application provided § 112 support for at least one claim of the reference, the US patent application publication.
Takeaways: Provisional applications must be well drafted and possess significant detail, which captures and explains the invention, in order to have § 112 support for at least one claim of the patent application publication or patent, which claims priority to the provisional patent application, in order for the patent or patent application to receive the provisional’s early and effective filing date. Absent such support, the patent application publication or patent will not receive the provisional patent application’s early filing date, and will only be effective as prior art from its actual filing date.
