In Dental Monitoring SAS v. Align Technology, Inc. (Fed. Cir. Aug. 10, 2026), the Federal Circuit made it harder for a later patent or published application to use a provisional filing date as prior art under §102(a)(2).
Under the PTAB’s Penumbra approach, it was generally enough that the provisional disclosed the particular subject matter being cited and that the later application properly claimed priority to it. The PTO did not require any claim in the later application to be entitled to the provisional’s filing date.
Federal Circuit Changes the Rule
Dental Monitoring rejects that approach. The court held that, before a later patent or application can use a provisional date as its prior-art date under §102(d)(2), the provisional must provide §112(a) support for at least one claim of the later patent or application.
There are therefore two separate questions:
1. Does the provisional support at least one claim of the later reference under §112(a)?
2. Does the provisional disclose the particular subject matter being relied upon as prior art?
If the answer to the first question is no, the reference cannot use the provisional date as its §102(a)(2) prior-art date.
Practical Impact on Prior Art
Practically, whenever a §102(a)(2) reference depends on a provisional filing date, we should now ask not only whether the cited disclosure appears in the provisional, but also whether at least one claim of the published reference is actually entitled to that provisional date.
The decision effectively restores the claim-support requirement associated with Dynamic Drinkware and conflicts with the current language of MPEP §2154.01(b).