by Dennis Crouch
In a significant decision, the Federal Circuit has established a more rigorous test for determining when a published patent application claiming priority to a provisional application can be considered prior art as of its provisional filing date. In re Riggs, Case No. 2022-1945 (Fed. Cir. Mar. 24, 2025). The case is decided under pre-AIA 102(e), and so it is not entirely clear whether the same law applies post-AIA.
The basic idea behind 102(e)/102(a)(2) is intuitive — the earlier-filed application should be given priority over the later-filed application. But, the actual doctrine has always been controversial because it creates what I call “secret springing prior art.” When an application is filed but not yet published, it exists as a confidential document at the USPTO that no competitor can access. When that application eventually publishes (typically 18 months after filing), it suddenly becomes prior art — backdated to its original filing date. This creates a situation where inventors might develop what they believe is novel technology, only to have an earlier-filed but later-published application “spring forth” as invalidating prior art.
Riggs focuses on reaching back even further – to the provisional application filing date. The key holding is that for a published patent application to claim the priority date of its provisional application as a prior art reference, the party asserting the patent application’s prior art status must show not only that at least one claim in the published application is supported by the provisional application, but also that the specific content in the published application relied on for the rejection has written description support in the provisional application. We now have a two part test for using prior art priority date under 102(e):
- At least one claim in the published application has written description support in the provisional application (Dynamic Drinkware test); and
- The specific portions of the published application relied upon as prior art also have written description support in the provisional application (Riggs).
The practical opinion by Judge Stoll reasoned: “It makes no sense to suggest that if a single claim is supported by the provisional application, then everything in the later filed application gets the benefit of the provisional date whether supported or not.”
This decision refines the court’s previous positions in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) and Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017), which established that a prior art patent cannot claim priority to its provisional filing date without showing that the provisional application provides written description support for the claims of the patent. The Riggs court has now extended this principle to require support for the specific portions of the disclosure relied upon in a rejection.
But, an open question is whether Riggs applies to post-AIA law. The statutes state:
- Pre-AIA: A person shall be entitled to a patent unless — (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent.
- Post-AIA: A person shall be entitled to a patent unless — (a)(2) the claimed invention was described in … an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Pre-AIA § 102(e) focused on whether “the invention was described” in an earlier-filed application, while post-AIA § 102(a)(2) addresses whether a “claimed invention was described” in an application that “was effectively filed” earlier. A straight interpretation of post-AIA 102(a)(2) could reject the Riggs test, but I agree with Judge Stoll that such an outcome does not make sense.
I take my other comment back–feel free to delete both of mine, Dennis.
MPEP 2154.01(b) discusses the effectively filed date of a prior art reference in AIA world, while MPEP 2152.01 discusses the effective filing date of an applicant’s claimed invention.
MPEP 2154.01(b) (citing Penumbra, Inc. v. RapidPulse, Inc. and explicitly saying the requirement of Dynamic Drinkware does not apply) requires only that the earlier application “describes the subject matter,” not full 35 U.S.C. 112 compliance
Was not the earliest prior art date for AIA patent references established as the Filing date of the reference’s provisional providing the subject prior art disclosure per the CAFC Penumbra v. RapidPulse decision? [Versus, as noted, for Pre-AIA patents, only if some provisional content is also claimed, per the earlier Dynamic Drinkware,and now this In re Riggs decision.
Penumbra v. RapidPulse is a precedential PTAB decision, not a CAFC decision. It reads the requirement of “entitled to claim a right of priority under section 119” in 102(d)(2) to mean “claiming priority” rather than being “actually entitled to priority.” Id. at 32. In my view, Riggs overrules this bizarre interpretation. Riggs at 10.
Riggs appears to have adopted MPEP § 2136.03 for pre-AIA 35 U.S.C. § 102(e), so it seemed like a good idea to look at MPEP § 2152.01 for 35 U.S.C. 102.
When Riggs says. “the provisional application must [] provide written description support for the specific portions of the patent specification identified and relied on in the prior art rejection,” sufficient written description seems to be the only requirement when dealing with pre-AIA.
MPEP § 2152.01 requires (at least for the examining corps) that “If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date of a claimed invention is the filing date of the provisional application for any claims which are **fully supported under 35 U.S.C. 112** by the provisional application” (emphasis added).
That seems to indicate that pre-AIA §102 has a written description requirement and [AIA] §102 has written description and enablement (and best mode) requirements–e.g., to be fully supported under §112–to achieve an effective filing date going back to the provisional application filing date.
Regarding whether Riggs applies to post-AIA patents, the Court states that “whether Lettich qualifies as prior art under pre-AIA § 102(e) turns on whether Lettich is **entitled to the priority date** of the provisional application.” Riggs at 10 (emphasis added). But AIA 35 U.S.C. 102(d)(2) states that “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 … if the patent or application for patent is **entitled to claim a right of priority** under section 119, … based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter”(emphasis added). Unlike the footnote in Dynamic Drinkware (880 F.3d at 1381 n.2), the Court did not specifically mention the differences between Pre- and Post-AIA interpretation of whether a patent is entitled to its provisional date, but it’s hard to see any daylight between Riggs’s “entitled to a priority date” and AIA 102(d(2)’s “entitled to claim a right of priority.”