Takeaways:
- Requesters should make sure to double cite to non-provisional and provisional if they require a provisional filing date for prior art.
- Patent Owners should make sure to check provisional teachings to ensure they enable, under anticipations standard, the teaching relied on in the non-provisional in the rejections.
When prosecuting a reissue or reexamination, or writing a reexamination request, parties need to be cognizant of when the parties or Office can rely on a provisional application for its priority date and what the burden is for the parties and Office to use such a related non-provisional as proper prior art. Over the last 10 years the Federal Circuit has issued several key decisions for this issue, with the latest coming in March 2025. The key holding addresses: (1) the “carried forward” requirement and thus (2) the requirement to double cite to the non-provisional and provisional in your arguments, or for the patent owner, to ensure the double cite has occurred.
The Federal Circuit in In re Riggs, 22-1945 reaffirmed that all non-provisional teachings needed to reject or invalidate a patent application or challenged patent claim must be “carried forward” from the provisional being relied upon to make the non-provisional proper prior art. This concept was first addressed in In re Wertheim, and later affirmed in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. See Wertheim, 541 F.2d 257, 262-263 (CCPA 1976); Dynamic Drinkware, 800 F.3d 1375, 1378 (Fed. Cir. 2015). In Riggs, the Board only determined whether the non-provisional used in the rejection had Section 112 support for its claims in the provisional. Slip Op at 13-14. The Court reaffirmed that, for the non-provisional to be entitled to the priority date of the provisional application, the section of the non-provisional relied on for the rejection must be supported by the provisional. Slip Op. at 12.
In making this determination, the Federal Circuit agreed with the patent applicant that the Board had not properly determined whether a non-provisional application being used as prior art was entitled to the priority date of its provisional. The Court explained: “[e]ven if one demonstrates that a provisional application provides written description support for one claim of the non-provisional application or patent, the provisional application must also provide written description support for the specific portions of the patent specification identified and relied on in the prior art rejection.” Id. at 12. The Court noted it was expanding on the holdings from Dynamic Drinkware and Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017). Id. at 13-14.
For the Office and requester, the best way to meet this requirement is to double-cite to the non-provisional and provisional for each claim element rejection or SNQ. For patent owners, they should check that the examiner or requester has met this requirement when facing a rejection or responding to reexamination request.
