by Dennis Crouch

Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Fed. Cir. Aug. 10, 2026)

Patent law cases often turn on timing. In our first-to-file system, the question often boils down to whether the patent at issue was effectively filed before the competing patent application.  This case is about the prior-art date of a patent or published application.  We know that under 102(a)(2), they are back-dated to the date they were "effectively filed," and the case answers when we look-back all the way to the provisional filing date.  Today's decision is important because it overturns USPTO policy implementing the AIA and ultimately, this gives patent owners a new way to knock out references that reach back to a priority filing date.  Although this decision centers on priority to US provisional patent applications, it should also apply to foreign filings.  That makes it a big deal since patents claim priority to one or the other of these.

Section 102(d) spells out the effective prior art date of a patent or published application in some detail but is worded in a clunky fashion:

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 under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c), 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.

The analysis thus requires both a document and subject matter analysis: was priority properly claimed and does it disclose the right subject matter.  For any given disclosure in the reference, the prior art date is the filing date of the earliest application in the chain that (1) the reference is entitled to claim priority to or benefit from, and (2) itself describes that disclosure.

In the pre-AIA case of Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), the Federal Circuit held that a reference does not get its provisional's filing date simply by claiming it. The provisional must supply § 112 support for the claims of the reference itself, and the party relying on the reference bears the burden of showing it. Because the rule is a necessary condition, a reference with no supported claim gets no earlier date at all, even where the provisional plainly describes the subject matter being used for the rejection.  But, the USPTO has been following a different and looser rule for post-AIA patents.  The agency reasoned that the new statute specifically states what is required, and that it requires less: the reference need only be "entitled to claim" priority, and the earlier application need only "describe the subject matter" being relied upon. Whether any claim of the reference is actually entitled to the earlier date drops out of the analysis.

Now, in Dental Monitoring, the Federal Circuit has rejected the USPTO's post-AIA approach and held instead that the same Dynamic Drinkware rule carries over to post-AIA prior art dating under 102(d)(2).  The outcome overrules the Board's precedential decision in Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466 (PTAB Mar. 10, 2023).