by Dennis Crouch
The Patent Trial and Appeal Board recently designated as precedential a portion of its Penumbra v. RapidPulse decision in that provides important guidance on the use of a provisional patent application’s filing date for 102(a)(2) prior art under the America Invents Act. Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (made precedential as to section II.E.3 on November 15, 2023). This is a pretty long post, but key takeaways are: (1) the PTAB expressly rejected the Federal Circuit’s pre-AIA Dynamic Drinkware rule (we’ll see how it goes on appeal); (2) when using a patent/publication as prior art based on an earlier provisional filing date, a petitioner now only needs to show the provisional describes the relied upon subject matter instead of requiring claims supported under §112; (3) this lowers the bar for leveraging provisionals as invalidating prior art before the PTAB (i.e., makes it easier to invalidate patents); however, (4) it remains unclear whether the courts will adopt the PTAB’s interpretation given the fairly minor statutory distinction underlying the decision. Toward the end of the post, I note that the ultimate questions on appeal may focus on the purposes and policy goals of the 102(a)(2) prior art provision and recognition of the provision’s potential unfairness. These may push the Federal Circuit toward rejecting the USPTO approach and instead extending Dynamic Drinkware to AIA patents.
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The language of 35 U.S.C. 102(a)(2) is a bit clunky, but its effect is to codify the first-to-file regime created by the America Invents Act of 2011. The provision recognizes that a prior-filed patent application will typically serve as prior art against another later-application filed by a different inventor and assignee. The provision does have some important caveats. Notably, in order to be prior art under 102(a)(2), the application must first either (a) issue as a US patent (under 35 U.S.C. 151) or (2) be published as a US patent application publication (under 35 U.S.C. 122(b)). Although a PCT application is not actually published under Section 122(b), it is “deemed a publication under section 122(b)” so long as it designates the US. 35 U.S.C. 374.
Foreign patent applications and provisional applications typically do not publish under Section 122(b) or issue as US patents — and therefore do not directly qualify as prior art as of their filing dates. Here though there is an important caveat — the 102(a)(2) designates the US patent/publication prior art as of its effective filing date. Section 102(d) then stretches the prior art date back to the earliest priority filing date so long as the US patent/publication “is entitled to claim a right of priority … or to claim the benefit of an earlier filing date.” By its terms, the Section 102(d) reach-back does not apply to the patent or published application as a whole. Rather, the statute indicates that the earliest effective filing date for prior art purposes is determined based whether “subject matter described in the patent or application” that is being used as prior art is also described in the priority document.
(d) Patents and Published Applications Effective as Prior Art.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application … (2) if the patent or application for patent is entitled to claim a right of priority … or to claim the benefit of an earlier filing date …, as of the filing date of the earliest such application that describes the subject matter.
35 U.S.C. 102(d). Thus, for a U.S. patent or published application to be considered effectively filed as of the filing date of an earlier priority application under Section 102(d), (1) the patent or published application must be entitled to claim priority to the earlier application, and (2) the earlier priority application must describe the particular subject matter relied upon in the patent or published application being used as prior art against the claimed invention. I term these two requirements as “entitlement” and “description” respectively. As you’ll learn below, the USPTO recently adopted this approach — further delineating the entitlement portion as “ministerial entitlement.”
102(a)(2) serves an important role in post-AIA law because it codifies the rules of the first-inventor-to-file regime. This was an important change from pre-AIA that, at times, allowed patentees to claim priority back to their provable date of invention. At the same time, 102(a)(2) prior art smarts of some fundamental unfairness because the references are kept secret for (typically) 18 months only to spring forth with a back-dating to the filing date. Even the most careful and contentious inventors and applicants have no way of organizing their affairs to avoid unintentional duplication or minor extension because the references are kept secret. This is one reason why in Europe, the parallel prior art is only available for novelty purposes, not for obviousness.
A key question post-AIA has been the extent that this new law changes the rules developed under the old parallel statute previously codified at 35 U.S.C. 102(e). The main point of contention is the interpretation of the the two requirements of entitlement and description.
The Federal Circuit faced a parallel issue in its Dynamic Drinkware case, albeit under pre-AIA law. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015). In Dynamic Drinkware, the Federal Circuit held that for a reference patent to receive the earlier filing date of its provisional application under pre-AIA 35 U.S.C § 102(e), the disclosure of the provisional “must provide adequate written description support for at least one claim of the issued [reference] patent” under 35 U.S.C. § 112, ¶ 1 (2006). In other words, it was not sufficient under the pre-AIA framework for the provisional application to merely disclose the subject matter relied upon in the reference patent to show obviousness of the claimed invention. Instead, Dynamic Drinkware required that the claims in the reference patent itself must also be fully supported by the written description of the priority provisional application under § 112, ¶ 1 in order to reach back to its earlier filing date for prior art purposes. Without full written description support, the priority filing does not serve as a proper anchor sufficient to justify the priority prior art date.
But, Dynamic Drinkware struck some folks as wrong because it focuses on what was claimed rather than what was disclosed. As I wrote back then:
Anyone who works with prior art knows that this 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 claimed but instead should focus on what was disclosed. . . .
Raymond came up with idea at issue first and disclosed it in a provisional patent application that eventually resulted in an issued patent. But, since Raymond’s non-provisional application included [and claimed] additional subject matter, the provisional disclosure no longer counts as effective prior art.
Crouch, Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result, Patently-O (Sept. 8, 2015). I went on
Here comes the new decision. The USPTO recently designated a PTAB decision as precedential that rejects Dynamic Drinkware as applied to post-AIA patents. Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (made precedential as to section II.E.3 on November 15, 2023). Although the USPTO does not have authority to overrule Federal Circuit decisions regarding the law of patents and what counts as prior art, it skirted the issue here by noting that the statute was substantially rewritten in the AIA.
IPR2021-01466 involves RapidPulse’s U.S. Patent No. 10,531,883 B1 which relates to an aspiration thrombectomy system used to treat ischemic strokes by removing blood clots. The petitioner, Penumbra, challenged the validity of claims 1-18 of the ’883 patent as obvious over prior art references including Teigen et al. (U.S. Patent No. 11,096,712).
But, Teigen only counts as prior art if it can reach back to its provisional application under 102(d). RapidPulse argued that Teigen did not qualify as prior art because the petitioner failed to establish written description support in Teigen’s provisional applications for claimed subject matter as required under Dynamic Drinkware.
In the precedential section of the Penumbra decision, the PTAB rejected the application of Dynamic Drinkware for determining whether a patent is entitled to claim priority to provisional applications for prior art purposes under §§ 102(a)(2)/(d) of the AIA. Under Penumbra, the PTAB identified the two statutory requiements:
- Entitlement: The patent or published application must meet the ministerial/procedural requirements to be entitled to claim priority to the provisional application under 35 U.S.C. §119 or §120. This does not require actually showing the claims are fully supported under §112, but only that the patent document need meets the “‘ministerial requirements’ of §§119 and 120.”
- Disclosure: The provisional application must describe the particular subject matter from the patent or published application that is relied upon as prior art against the challenged patent claims.
In other words, under the AIA statutory framework, a petitioner must show: (1) the reference patent meets certain formalities to claim priority to the provisional, and (2) the provisional application describes the specific portions of the reference patent that are asserted as prior art, even if other portions are not described in the provisional and even if no claims in the prior art patent are fully supported by the provisional.
The PTAB expressly rejects “extending” pre-AIA law, including the Federal Circuit’s Dynamic Drinkware decision, to require establishing §112 support for the claims of the reference patent itself. Only the subject matter relied upon to show obviousness needs written description support in the priority application to reach back to its earlier filing date.
This precedential PTAB decision thus begins to settle the question of whether Dynamic Drinkware applies under the AIA for the effective date of prior art patents and published applications. The holding particularly lowers the burden for petitioners seeking to rely on provisional and foreign filing dates for asserted references because the challenger no longer needs to show § 112 support for a reference patent’s claim, but rather only needs to show that the subject matter at issue is described in the provisional.
This case will certainly be appealed, and it is not entirely clear that the Federal Circuit will agree with the USPTO’s rejection of its precedent. Although the statutory framework is different, the statutory differences do not clearly indicate a shift in precedent. Thus, there is a good chance that this case will also be reversed on appeal.
The ultimate questions here may focus on the purposes and policy goals of the 102(a)(2) prior art provision and the recognition of the provision’s potential unfairness. Namely, is the provision primarily focused on enforcing the first-inventor-to-file aspects of the law? Or, is the provision’s primary purpose simply to expand the scope of invalidating prior art references?
If the main thrust of 102(a)(2) is to codify a first-inventor-to-file system, then the Dynamic Drinkware approach of requiring full written description support for the claims of a reference patent makes more sense. The claims dictate what has been invented first and claimed first. Provisional support for subject matter disclosed but unclaimed in the prior art patent does not establish first-inventor status.
However, if 102(a)(2) is intended principally to expand prior art, then the PTAB’s focus on merely requiring that the provisional describe the relied upon subject matter is more in line with that goal. Expansion of invalidating art takes priority over only allowing first-claiming inventors to rely on early priority dates.
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I would be remiss to post this without harping on one of my pet notions that provisional patent applications should all be considered prior art as soon as their file is open to the public. The USPTO needs to do a better job of making provisional applications publicly available — many include details and descriptions that are not found in the later non-provisional. But, as far as I am aware, there is no searchable database of US provisional applications.
“If the main thrust of 102(a)(2) is to codify a first-inventor-to-file system, then the Dynamic Drinkware approach of requiring full written description support for the claims of a reference patent makes more sense. The claims dictate what has been invented first and claimed first. Provisional support for subject matter disclosed but unclaimed in the prior art patent does not establish first-inventor status”
I cannot agree with this part, this seems to say that as an inventor you only have one shot at drafting your claims, otherwise you are out of luck to catch all your other inventions. This just turn “first-inventor-to-file system” into a “first invent AND first claim system”
I think this is a fair point Mike.
Mike D.,
Agreed – it is well-recognized (i.e., BROADENING re-filings within two years) that claims and disclosure are not overlapping and that MORE may be obtained (e.g., through a series of properly timed continuations).
I’ve got a comment stuck in the filter.
Dennis, here is some legal support for your bottom-paragraph question as to a provisional’s contents being prior art as of it’s publicly laid-open date:
MPEP 2127 II B: “A 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(b) Rejection Over a Published Application May Rely on Information that Was Canceled Prior to Publication. Figures that had been canceled from a Canadian patent application before issuance of the patent were available as prior art under pre-AIA 35 U.S.C. 102(b) as of the date the application became publicly accessible. The patent at issue and its underlying application were available for public inspection at the Canadian Patent Office more than one year before the effective filing date of the patents in suit. Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 78 USPQ2d 1684 (Fed. Cir. 2006).”
I think there may be some confusion here. When Dennis is saying that “provisional patent applications should all be considered prior art as soon as their file is open to the public” [by publication of the formal application claiming priority from the provisional], that is about a logical later, second, possible prior art date for the contents of the provisional. The first and earlier such prior art date being the Filing date of the provisional IF it was under the AIA per this Penumbra v. RapidPulse decision. But only if that provisional content is also claimed, per Dynamic Drinkware, for Pre-AIA patents. We may be stuck with Dynamic Drinkware until all pre-AIA patent enforcement dates are expired. Even though that decision strangely discriminates in that respect against using provisionals, with no logical reason or indicated intent by Congress to do so in establishing the U.S. provisional filing system?
Paul, there is another point of confusion, at least for me. See the third and final paragraph of my 221111 in this thread. anon is not able to throw any light. If you can, I should be grateful.
Do not confuse “will not” with “not able.”
Sorry, I’m confused by your confusion. This is about the whole contents [or not, IF claiming is required] earliest prior art dates of provisional applications spec contents as references against someone else’s patent claims. Not about “first to invent” or “first inventor to file” issues as to which one is entitled to get a patent between applicants with Competing Claims competing as to which of them is entitled to get the patent.
He’s trying to shoehorn his EPO Uber Alles and a (nonexistent) AIA ‘change’ to how the US Sovereign handles the provisional to non-provisional transition (said transition, as I noted previously, can happen by way of two paths).
Look, I appreciate both of your efforts to engage but what I’m on about is how to adjudicate priority contests between rival applicants under a First to File regime. In the run up to the making of the European Patent Convention there were two rival legal theories: “prior claiming” (call it Dynamic Drinkware if you will) and “whole contents” (call it Penumbra if you will). The leading English prior claiming precedent is Kromschroder’s case, which one can Google. German petty (10 year) patent law is similar.
Tossing another thought into the mix, think of priority under the Paris Convention. You get it if your earlier filing (the priority application) is an application to protect the “same invention”. Now, how do you decide what is the “same invention”? Perhaps decide it on the basis of what is claimed (or what “statement of invention” you can find in the claim-free provisional specification?
As the courts in the USA push forward into virgin FtF territory, they will have to think about these two rival theories, and which one takes precedence. The impression I get here is that prior claiming is well-placed to win the competition.
But is Dennis alluding to all this with his: “is the provision primarily focused on enforcing the first-inventor-to-file aspects of the law? Or, is the provision’s primary purpose simply to expand the scope of invalidating prior art references?”
Or is he off on another track entirely? I don’t know and I should therefore appreciate any comments that can enlighten me.
Want enlightenment?
Stop shoehorning.
“extending Dynamic Drinkware to AIA patents.”
That they will do. In 3 … 2 … 1 …
For me, Dennis, your last paragraph is not 100% clear. When you write that the disclosure content of a pro becomes citable prior art “as soon as” the USPTO file in which it sits becomes available to the public, are you saying that no “back-dating” of its prior art effect should be possible, that its effective date is the date the USPTO opens the file and not a day earlier?
Or do you have in mind that with opening of the USPTO file, all the disclosure content of the pro (including any enabled disclosure in it that is NOT carried forward into the by now published non-pro) shall be prior art effective as of the fing date of the pro?
I will put up for discussion (in view of my comment below) two complicating factors for consideration:
1) The legal purpose of the doctrine is indication of State of the Art at the time of the submission.
2) Even if NOT true, an applicant’s admission of what ‘is’ state of the art IS held against the applicant. Such admissions though – if NOT true – are not binding on any one else.
I thought what Dennis wrote in the last paragraph was clear: as soon as provisionals are publicly accessible (by virtue of the corresponding utility patent application being published) then the provisional’s disclosure is prior art for all purposes, full stop.
Ah, MD, I see the question now. The question is: what is Dennis’ opinion on the “correct” effective date of a provisional’s disclosure as prior art.
Indeed so. That exactly is what I want to know.
See 2.1.
(therein is the well, if you choose to drink is another matter altogether)
Well I realise, anon, at least this, that you suppose that at 2.1., sub-para 1) you have flagged up what you see as the key issue. It’s just that I don’t understand what you have written. What is it about your “factor” that is “complicating” the situation more than it already is?
The EPC, at Article 54, gives its clear and concise definition of “the state of the art”. What is the corresponding definition in the USA?
Besides, I don’t understand the distinction Dennis makes between expanding the prior art and codifying a “first inventor to file” patent system. My guess is that he is harking back to the pre-EPC debate in Europe in the 1960’s between a “prior claiming” system of adjudicating priority disputes between inventors (as was used back then in the FtF UK) and the “whole contents” approach taken in the FtF EPC in 1973. Would you agree?
Sorry, I don’t have any of those fancy EPO Uber Alles spectacles (and wouldn’t wear those fugly things if you gave me a pair).
My p00r sarah, – ALL patent law is “regional.”
Sure, there may be international treaties hoping to establish comity, but make no mistake, the very purpose of patent law is for the benefit of a particular Sovereign.
ah, I see that ‘p00r sarah’ has already been expunged.
My reply was to her comment to me about my position being somehow ‘bad’ as to my being a ‘regionalist.’
See 4 above.
The (huge) difference in the claim versus description debate is whether or not 112 has been examined (as such).
I have had clients that literally choose to file “whatever” as provisionals (much to be chagrin, consternation and against my advice), replete with both damaging words, pure hypotheticals and (at time of filing) what can be generously labeled as science fiction.
Now, my own longstanding advice has always been to treat provisional filing with as much rigor as one would a non-provisional filing – but I would suggest that this may not be a majority view.
That being said, the traditional aspects of determining whether an item is accessible does come into play when a later non-provisional (claiming priority to a provisional) is itself published (the fact that the USPTO does provide an active hyper link is fairly well known).
This too calls to my mind some of my other long-standing advice – the running default for US filings should be filing with a non-publication request with a review point docketed at the appropriate time to evaluate whether any intervening event has removed the right to claim non-publication.
“Now, my own longstanding advice has always been to treat provisional filing with as much rigor as one would a non-provisional filing – but I would suggest that this may not be a majority view.”
It’s been my view to craft a provisional with as much detail I’d put into a non-provisional. However, the final call is up to the client as to how much money they are looking to spend. Some just want a cover sheet slapped on top of a presentation, but others are willing to invest in the provisional.
“Some just want a cover sheet slapped on top of a presentation”
And some just want a cover sheet slapped over someone else’s presentation. In both cases, these are people who aren’t skilled at thinking ahead.
Be that as it may, Malcolm, practitioners (for better or worse) simply are limited by their clients and the decisions of the clients.
We are of like mind (again), ipguy.
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