Prior Art Status of US Provisional Applications Limited By Federal Circuit

On September 4, 2015 the United States Court of Appeals for the Federal Circuit issued its decision in Dynamic Drinkware, LLC v National Graphics, Inc.  Dynamic had appealed a decision of the Patent Trial and Appeal Board that found US Patent No 6,635,196, owned by National Graphics, was not anticipated by US Patent 7,153,555 (Raymond).  In particular, Dynamic sought to overturn the Board’s finding that the Raymond patent was not entitled to the filing date of a provisional application to which it claimed priority. 

While US provisional applications do not qualify as prior art, a later-filed non-provisional application will generally be given a prior art date of the provisional filing, and prior art status once it is published.  Dynamic claimed that the Raymond patent anticipated National’s patent.  However, the Board had found that the provisional application did not provide a written description supporting the claims of the parent patent.  Accordingly, the Board found National’s patent was not anticipated by Raymond. 

The Court of Appeals agreed with the Board’s decision, concluding that Dynamic’s patent did not anticipate National Graphics patent because it was not entitled to the provisional application’s earlier filing date.  The Court noted that Dynamic, as the challenger of the patent, had the onus to demonstrate support in the Raymond provisional application for the claims of the Raymond patent. 

Additional Commentary is available here.