Federal Circuit Requires Provisional Application to Support at Least One Published Claim to Establish Prior Art DateAugust 13, 2026

In Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Fed. Cir. Aug. 10, 2026), the Federal Circuit addressed when a patent or published patent application can rely on an earlier provisional filing date for prior art purposes under § 102(a)(2). The court held that disclosure of the particular subject matter being relied upon as prior art is not, by itself, enough. The provisional must also provide § 112(a) written description support for at least one published claim of the later publication.

The issue involved U.S. Patent Application Publication No. 2021/0068923 (“Carrier”). Carrier’s provisional application was filed before the effective filing date of Dental Monitoring’s U.S. Patent No. 10,755,409, but Carrier’s nonprovisional application was filed after that date. Thus, whether Carrier could qualify as prior art for the relevant period depended on whether it could utilize the filing date of its provisional application.

The Patent Trial and Appeal Board concluded that it could. Relying on Penumbra, Inc. v. RapidPulse, Inc., the Board applied a “ministerial requirements” approach. Because Carrier satisfied the requirements for claiming priority and its provisional application described the subject matter relied upon as prior art, the Board gave Carrier the earlier provisional filing date.

The Federal Circuit rejected that approach. Under § 102(d)(2) (see MPEP § 2154.01(b)), the later patent or application must be “entitled to claim a right of priority” under § 119. The Federal Circuit interpreted “entitled to” as requiring substantive entitlement to priority. Because § 119(e) requires the invention to be disclosed in the provisional application in the manner provided by § 112(a), the court concluded that the provisional must provide written description support for at least one published claim of the later publication used as a prior art reference.

The significant aspect of the decision is that support for a published claim and disclosure of the subject matter being relied upon as prior art are separate requirements. A provisional application may describe the particular subject matter that a party later seeks to rely upon as prior art, but that disclosure alone does not give the later reference the provisional filing date. The party must separately establish that the provisional provides § 112(a) written description support for at least one published claim of the later reference. In other words, the inquiry is not limited to whether the relied-upon disclosure was present in the provisional; it also requires determining whether the provisional supports at least one claim that was later published.

The Federal Circuit did not decide whether Carrier satisfied this additional requirement. The Board had determined that Carrier’s provisional described the relied-upon subject matter but had not determined whether the provisional provided § 112(a) written description support for at least one Carrier claim. The Federal Circuit therefore vacated the Board’s decision and remanded for the Board to make that determination.

Patent applicants should pay close attention to this holding, which clearly departs from the less stringent standard previously applied for establishing provisional priority. Based on this decision and longstanding legal best practices, patent applicants should ensure that any provisional application contains sufficient written description to support claims in a later filed application to avoid losing the benefit of the provisional filing date in prior art disputes.

Monica B. Nagpal is a Patent Agent in the MVS Biotechnology & Chemical Practice Group. To learn more, visit our MVS website, or contact Monica directly via email.