Getting Priorities Straight: Patents Have No Presumptive Entitlement to Priority Date of Provisional Applications

Editor: Lauren J. Dreyer

In Dynamic Drinkware v. National Graphics, No. 15-1214 (Fed. Cir. Sept. 4, 2015), the Federal Circuit affirmed the Patent Trial and Appeal Board’s finding that IPR Petitioner Dynamic Drinkware failed to prove that its cited prior art U.S. patent was not entitled to its provisional application’s priority date.

At the PTAB, Patent Owner National Graphics argued that alleged 102(e) prior art submitted by Dynamic Drinkware in its IPR petition was not entitled to its provisional filing date, and instead only to its later non-provisional filing date because additional subject matter was added—additional subject matter used to attack National Graphics’ patent.

The Court agreed, rejecting Dynamic Drinkware’s argument that patents are presumptively entitled to the benefit of their provisional application’s filing date, noting that the PTO does not examine provisional applications or priorities as a matter of course. For a non-provisional patent to claim priority to its provisional application’s filing date, the invention must be disclosed properly in the provisional. Because Dynamic Drinkware failed to compare the claims of the patent to the disclosure in the provisional, the Court concluded that it did not satisfy its burden of showing written description support for the newly added material.

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