Imagine That IP Law Blog

The recent precedential Federal Circuit decision on March 24, 2025 in In re Riggs, Case No. 2022-1945 (Fed. Cir. Mar. 24, 2025) is a reminder to patent practitioners and examiners, alike, of the importance of provisional support for subsequently filed applications that claim priority to the provisional.   

Essentially, the Riggs decision aligns with the MPEP with respect to whether an Examiner’s reliance upon the provisional priority date of a published U.S. application can provide the basis for a prior art rejection. The MPEP provides that “[t]he provisional application must also describe, in compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35 U.S.C. 112(a), the subject matter relied upon in the reference patent or publication to make the rejection.” MPEP § 2136.03 III

To be able to apply the decision most effectively, it is worth noting how Riggs may be interpreted in both pre-AIA and post-AIA worlds. Riggs concerned pre-AIA U.S. Application No. 11/005,678 filed on December 7, 2004, which claimed priority to Provisional Application No. 60/221,541, filed on July 28, 2000. The ‘678 application was rejected under pre-AIA 35 U.S.C. 102(e) to U.S. Application No. 09/843,392 to Lettich et al. filed on April 26, 2001, which claimed priority to Provisional Application No. 60/200,035, filed on April 27, 2000. 

The Riggs case reached the Federal Circuit on appeal following the Patent Trial and Appeal Board (PTAB) holding that Lettich, based on its provisional filing date of April 27, 2000, was prior art under Section 102(e). The PTAB based its decision on Dynamic Drinkware, Amgen, and MPEP 2136.03, noting that “at least one claim in the Lettich Application Publication must find written description support in [Lettich’s Provisional Application No. 60/200,035, filed on April 27, 2000] in order for the Lettich application to be prior art against the instant claims [of Riggs].” (emphasis added).

In finding the PTAB’s “at least one claim” test inadequate, the Federal Circuit held that “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. In other words, to claim priority to the provisional filing date, the portion of the application relied on by the examiner as prior art must be supported by the provisional application.”   

Riggs raises questions on the appropriate test of how to survive (or assert) challenges to pre-AIA patent applications under pre-AIA 35 U.S.C. 102(e) and post-AIA applications under AIA 35 U.S.C. 102(d). For pre-AIA, Riggs considered in view of MPEP 2136.03 suggests that for a published U.S. application to be entitled to priority to a provisional filing date, it must satisfy two steps: (1) meet the aforementioned “at least one claim” test, and (2) have provisional support for portions of the patent specification identified and relied on in the prior art rejection. 

For post-AIA patent applications, further interpretation is required in view of Riggs only addressing the proper test for a pre-AIA patent application.  For example, at least MPEP § 2136.03 III plainly dismisses the “at least one claim” test of step (1) in the post-AIA world:

“... Dynamic Drinkware [i.e., the “at least one claim” test] only applies to applications and patents subject to pre-AIA 35 U.S.C. 102.” 

MPEP 2154.01(b) then acknowledges step (2) for post-AIA applications:

“AIA 35 U.S.C. 102(d)  requires that a prior-filed application to which a priority or benefit claim is made must describe the subject matter from the U.S. patent document relied upon in a rejection.” 

Riggs thus appears to align with the MPEP for post-AIA patent applications:

“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.”    

“... if a single claim in the prior art published non-provisional application is adequately supported by the written description of the provisional application, then the filing date of the provisional applies carte blanche to the prior art published application, irrespective of whether the cited content in the prior art published application was adequately supported by the written description of the provisional application. We disagree with this approach.”      

For Patent Applicants and Patent Prosecutors

In general, when drafting provisional applications, it continues to be best practice to prepare a thorough description of the invention to support the novel features and claims for a subsequently filed non-provisional application. A patent applicant’s published application or patent that is fully disclosed and enabled by its provisional is more likely to provide a valid prior art reference against competitor applications. 

And when responding to prior art rejections, practitioners are advised to double-check the effective filing dates of the prior art references cited by the Examiner. Is there a question of whether the effective filing date of the reference actually predates the filing date of the claimed invention? If so, confirm that the portions of the references relied upon by the Examiner actually have provisional support for purposes of determining the actual date that the reference was “effectively filed” under AIA 35 U.S.C. 102(d). It may be possible to assert the argument in a Response that the Office Action is relying upon an improper prior art rejection.

For Patent Owners and Petitioners in IPR Proceedings

The Federal Circuit’s January 14, 2025 decision in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd. Case No. 23-2346 (Fed. Cir. Jan. 14, 2025) confirmed that “a published patent application can be deemed prior art in an IPR as of the application’s filing date” (e.g., based on a prior provisional filing date). The take-away is that although a patent application may publish after a patent owner’s claimed invention, “it may serve as prior art to the invention if the application was filed before the invention.”

As such, patent owners should consider that an IPR petitioner, under pre-AIA 35 U.S.C. 102(e)(1) or AIA 35 U.S.C. 102(a)(2), may raise prior art, based on a newly published application with a provisional priority date, previously unknown to the patent owner when the patent owner’s invention was filed. At that point, the patent owner may consider strategies in light of Dynamic Drinkware (for pre-AIA matters) and/or Riggs (for pre-AIA and post-AIA matters), as outlined above, to evaluate whether the portions of the references relied upon by the IPR petitioner actually have provisional support.