prior art – IP Law Watch

Federal Circuit Confirms § 112(a) Support Required for a Reference’s Provisional Prior-Art Date

In Dental Monitoring SAS v. Align Technology, Inc., the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB) Inter Partes Review (IPR) decision and held that under 35 U.S.C. § 102(d)(2), a published patent application receives the benefit of its provisional’s filing date for prior-art purposes only if the provisional provides written description support under § 112(a) for at least one claim of the published application.

Dividing and Conquering: Best Method Obligations Follow Every Divisional Patent Application

Apr 15 2026

In an important decision, the Full Federal Court in The NOCO Company v Brown and Watson International¹ held that the relevant date for assessing the best method known to the applicants is the filing date of each divisional application. This judgment carries significant implications for patent filing and litigation strategies, as patentees must consider the adequacy of the best method disclosures in existing and future divisional patent specifications.

PTAB’s Motion to Amend Patentability Powers

Jul 27 2020

In a 2-1 split decision on Wednesday, July 22, 2020, the Federal Circuit confirmed that the Patent Trial and Appeal Board (“PTAB“) had the authority to reject substitute claims under 35 U.S.C. §§ 101 and 112, statutory grounds not available to the PTAB for evaluating patentability of granted patent claims in inter partes review (“IPR“). (Uniloc 2017 LLC, v. Hulu, LLC et al., Case No. 2019-1686, slip op. at 3 (Fed. Cir. July 22, 2020).)

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