Whose Provisional Counts, and When
| Court | Federal Circuit |
|---|---|
| Decided | 10 August 2026 |
| Citation | No. 2025-1752 (Fed. Cir. Aug. 10, 2026), precedential |
| In one line | Somebody else's provisional only becomes early prior art against you if it supported at least one claim of the patent that issued from it. |
A patent or published application is entitled to its provisional's filing date for prior art purposes under section 102(d)(2) only where the provisional provides written description support for at least one of the reference's published claims. Satisfying the ministerial requirements of sections 119 and 120 is not enough.
Every other page in this cluster is about your own filing. This one runs the other way.
When an examiner or a petitioner cites a patent against you and reaches back to that patent's provisional for an earlier date, the Federal Circuit has now said what they must show. The provisional has to provide written description support for at least one claim of the reference itself. Describing the subject matter being relied on is necessary and not sufficient.
The court's own phrase for the standard it rejected is the one to remember. The requirement "is not merely 'ministerial.'"
Why the Date Decided Everything
The configuration matters, and it is narrow. The Board found that the effective filing date of the challenged patent "fell between the filing date of Carrier's provisional application and the filing date of Carrier's non-provisional application." In that window the reference either reaches back or it is not prior art at all.
The court paused to say what the reach-back was for, which is unusual and worth quoting. The provisional date was not being used to give the reference priority over a competing application, "but to serve Align's goal of creating earlier prior art against the '409 patent."
The Statutory Chain
| Step | What it says | What it adds |
|---|---|---|
| Section 102(a)(2) | A patent or published application may be prior art as of the date it was effectively filed | Sets the question |
| Section 102(d)(2) | The earlier date applies "if the patent or application for patent is entitled to claim a right of priority under [§] 119" | The words "entitled to" are the hinge |
| Section 119(e)(1) | Entitlement exists only where the invention is "disclosed [in the provisional application] in the manner provided by [§] 112(a)" | Pulls in written description |
| The result | "Thus, the statutory text requires § 112(a) support for at least one of the prior art patent's published claims before that reference may obtain an earlier filing date for prior art purposes." | The reference's own claims, not yours |
The court's reasoning turns on two words. "That language naturally refers to substantive entitlement under § 119, not merely the procedural act of claiming priority." Reading it the other way would treat the statute as though it described a patent that merely asserts priority, and would leave the words "entitled to" doing nothing.
Three Arguments That Did Not Work
- That Dynamic Drinkware was a pre-AIA case only. The court: "Align confuses a reservation of decision with a holding on the merits." The earlier decision reserved the question rather than deciding it, and its underlying concern survives, which is that a challenger should not "backdate prior art by claiming priority from an earlier application that would not have supported a patent on the claimed invention."
- That the AIA separated a claimed invention's effective filing date from a reference's prior art date, so the substance drops out. That separation "identifies which statutory inquiry is being performed, but it does not determine what substantive requirements" the word entitled carries.
- That floor statements called the requirements ministerial. The court: "the authoritative statement is the statutory text, not the legislative history or any other extrinsic material."
One footnote is worth knowing if you have seen the Board's decision cited. The court's earlier Rule 36 affirmance in the Penumbra appeal "has no precedential value and cannot establish applicable Federal Circuit law."
What This Does Not Decide
- It does not say how much written description support is enough. The Board made no findings, so the court had none to review, and the case was remanded for exactly that.
- It does not say whether any particular reference qualifies as prior art.
- It does not say anything about whether a claim is anticipated or obvious.
- Three Federal Circuit appeals share this caption. This is No. 2025-1752. A July 2026 decision under the same caption held other claims of the same patent ineligible, and another addressed public accessibility of a different reference.
Educational, not legal advice. Whether a reference reaches back is a determination on a record, for a registered practitioner with the file in front of them.
Sources
- Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Fed. Cir. Aug. 10, 2026), precedential, on appeal from IPR2023-01369
- 35 U.S.C. 102(a)(2), 102(d)(2) and 119(e)(1)
- Back to the cluster: what counts as prior art