The Federal Circuit’s decision in Dental Monitoring SAS v. Align Technology, Inc., Case No. 2025-1752 (Fed. Cir. Aug. 10, 2026), clarifies when a patent or published application can rely on an earlier provisional application to qualify as prior art under the America Invents Act.
The court held that locating the relevant technical disclosure in the provisional application is not enough. To obtain the provisional’s filing date under 35 U.S.C. § 102(d)(2), the later reference must also be substantively entitled to priority under § 119. That requires the provisional to provide written-description support under § 112(a) for at least one published claim of the later reference.
The ruling vacated a Patent Trial and Appeal Board decision finding claims of Dental Monitoring’s U.S. Patent No. 10,755,409, obvious. Align Technology had relied on a published patent application known as Carrier, whose nonprovisional filing date was too late to qualify as the necessary prior art. Carrier could serve as earlier prior art only if it was entitled to the filing date of its provisional application.
The PTAB concluded that Carrier could use that earlier date. Relying on its precedential decision in Penumbra Inc. v. RapidPulse, Inc., the Board required only compliance with the procedural requirements for claiming priority and disclosure in the provisional of the particular subject matter being used as prior art.
The Federal Circuit rejected that approach.
Substantive Entitlement, Not Merely a Priority Claim
Section 102(d)(2) provides that a reference may receive the filing date of an earlier application when it “is entitled to claim” priority under § 119. Section 119(e), in turn, requires disclosure satisfying § 112(a).
For Charles Gideon Korrell, the distinction between claiming priority and being entitled to priority is the central point of the decision. The Federal Circuit concluded that Congress did not create a purely procedural mechanism for assigning an earlier prior-art date. The underlying provisional must substantively support the later reference.
The decision also preserves the core principle of the Federal Circuit’s pre-AIA decision in Dynamic Drinkware, LLC v. National Graphics, Inc. Although Dynamic Drinkware expressly left the operation of AIA § 102(d) unresolved, Dental Monitoring concludes that the AIA did not eliminate the written-description foundation required to reach back through a priority chain.
A Two-Part Test for Provisional Prior Art
The decision effectively establishes two inquiries when a challenger relies on a provisional filing date.
First, the provisional must provide § 112(a) written-description support for at least one published claim of the later patent or application.
Second, the provisional must contain the particular subject matter from the later reference that is being asserted as prior art.
The PTAB had addressed the second requirement for Carrier but had not made the necessary findings on the first. The Federal Circuit therefore vacated and remanded rather than deciding whether Carrier ultimately qualifies as prior art.
Charles Gideon Korrell notes that this distinction has immediate consequences for inter partes review practice. Petitioners should not assume that the priority date appearing on the face of a patent reference will withstand scrutiny when the reference needs an earlier provisional date to qualify under § 102(a)(2). Patent owners, conversely, have reason to examine the entire priority chain when the timing of an asserted reference matters.
The decision also reinforces the importance of careful provisional drafting. A deficient provisional can affect not only the applicant’s ability to claim an earlier priority date, but also whether the resulting patent or publication can later serve as prior art against someone else.
A more detailed discussion of Dental Monitoring v. Align, including the court’s treatment of Dynamic Drinkware, the PTAB’s Penumbra decision, Rule 36 affirmances, and the practical implications for IPR strategy, is available at TechInfoLaw.com.
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