The pending petition in Ariosa v. Illumina focuses on a narrow but important issue of prior-art status of a provisional patent application. Really, the question is: what is the “prior art date” of a provisional patent application?
Whether disclosures in a published application that refers back to an earlier filed provisional application are prior art as of the filing date of the provisional application.
The basic answer that we received from the Federal Circuit is “sometimes.” A provisional application will only count as “prior art” as of its filing date if the later published application (or issued patent) sufficiently supports all of the claims in the resulting non-provisional application as published (or issued patent).
This impacts a large number of US patents: Although I have not recently measured, I my expectation is that most non-provisional patent applications add some amount of new matter beyond their provisional priority documents. If that new information makes it into some of the claims — the result is that the provisional filing date will be immaterial with regard to prior art (under current Federal Circuit precedent).
CVSG: The petition for certiorari is well written, and the Supreme Court called for the views of the Solicitor General. The SG has now submitted his brief — joined by the USPTO — suggesting denial of cert.
In its brief, the US Gov’t argues that the Federal Circuit is totally wrong in its analysis, but that this case is not a good vehicle for reviewing its approach because petitioner’s argument is also mistaken.
The government brief follows my approach outlined in my 2015 Dynamic Drinkware post:
Anyone who works with prior art knows that this [priority requirement] 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.
The government brief agrees that interpretation of proper priority claim under “119(e) has no bearing on the date on which a patent application qualifies as prior art under Section 102(e). There is no textual basis for using that provision’s priority rules to backdate patent applications sought to be relied on as prior art.”
Rather, the Government argues that, under the statute, all provisional applications count as prior art as of their filing dates once relied upon for priority by a published non-provisional application. According to the government brief, publication of the underlying application also lays-upon the file history and effectively publishes the provisional as well. Thus, at that point, the provisional counts as “‘an application * * * published under section 122(b)’ and therefore constitutes prior art as of its own filing date.”
The Government brief acknowledges that Section 122(b) states flatly that a provisional application “shall not be published.” Although this appears to contradict their statement that the PTO is publishing those applications, the Government brief argues that the statement only refers to provisional applications abandoned without being relied upon for priority.
Where, as here, a provisional application has been incorporated by reference into a later non-provisional application, the referenced provisional application effectively becomes part of the non-provisional application. Under those circumstances, the USPTO’s obligation to publish the non-provisional application encompasses the contents of the provisional application.
In its Brief, the Government explains that “the Federal Circuit has not directly addressed the question whether a provisional application may itself qualify as prior art under Section 102(e)(1), without recourse to Section 119(e).”
The brief here suggests a GVR (Grant-Vacate-Remand) order from the Supreme Court to address this particular issue on remand.
Interesting to read this particular brief for style. Although this is certainly a complicated area, the SG brief did not really attempt to simplify it in any way — perhaps to further discourage the Supreme Court from taking up the issue.
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Note here that this particular case focuses on “old” pre-AIA Section 102(e). Although the AIA substantially altered Section 102, I don’t believe that the alterations will change the outcome in this case. As such, the case is important.
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Ariosa Diagnostics v. Illumina: Prior Art Date of a Provisional Patent Application
Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result