Authored by: Jeremy J. Gustrowsky
The Federal Circuit recently decided In re Riggs which sheds new light on when a published patent application can use the filing date of its earlier provisional application to qualify as prior art against another patent filing. The case involved U.S. Patent Application No. 11/005,678, which covers logistics systems for managing shipments, and was rejected by the Patent Office based on a prior application, U.S. Patent Application Publication No. 2002/0049622 (“Lettich”). The big question: could Lettich use the earlier date of its provisional application to “beat” the Riggs application to the punch?
The Federal Circuit said that just because a non-provisional patent application (like Lettich) claims priority to a provisional application, it doesn’t automatically get to use the provisional’s filing date for everything in its specification. Instead, only the specific parts of the non-provisional application that are actually supported by the provisional’s written description can use that earlier date. In other words, if the examiner is relying on a certain paragraph or feature in Lettich to reject another application, that exact content must be clearly described in the provisional application for Lettich to count as prior art as of the provisional’s date.
The court also addressed a procedural challenge from the Riggs inventors, who argued that the Patent Trial and Appeal Board acted outside its authority by granting an examiner’s request for rehearing. The court found that this issue had already been decided in a previous case involving the same parties, so the inventors were barred from raising it again.
Ultimately, the Federal Circuit vacated the Board’s decision and sent the case back for further analysis. The Board must now specifically determine whether the parts of Lettich relied on to reject the Riggs application are truly supported by Lettich’s provisional application. This decision is a reminder to patent applicants that when it comes to provisional applications, more disclosure is better than less, and failing to include details in the provisional filing which are later relied on in prosecution or litigation could be fatal.