Although it is commonly assumed that a provisional application is useful as a prior art reference on its filing date, Dynamic Drinkware LLC v. National Graphics, Inc. shows that this is not necessarily correct. Under certain circumstances, a provisional application may be unavailable as a prior art reference as of its filing date.

What This Means to You

  • A patent used as prior art reference that claims priority to a provisional does not automatically gain the benefit of its provisional date. Instead, the reference patent receives its provisional date only if at least one claim of the patent is supported by the provisional application.
  • The claims should thus be closely studied since some provisionals can be disqualified as available prior art, regardless of the teachings contained within those provisionals.

Case Background

During an inter partes review of a patent owned by National Graphics, Dynamic Drinkware argued that the challenged patent was invalid as being anticipated in view of a prior art provisional application having an earlier filing date. Dynamic Drinkware argued that the provisional and its subsequent patent each anticipated the subject matter of the challenged patent. National Graphics, in contrast, argued that the provisional was unavailable as of its filing date (thereby disqualifying it as a reference), and its subsequent patent had not been filed until after the invention date of the challenged patent (and thus, the subsequent patent was also not prior art).

Decision Analysis

The Federal Circuit held that a provisional application’s effectiveness as a prior art reference depends on support for the claims of the issued patent of which it was a provisional. If the issued patent does not contain any claims that are supported by the provisional, then that provisional is ineffective as a prior art reference, regardless of what other subject matter might be contained within the provisional. The Federal Circuit focused solely on the claims within the issued patent in performing this analysis, and whether those claims were described in the provisional, not on any other subject matter that was contained within the provisional (and not subsequently claimed). Having found that the claims of the issued patent were unsupported by the provisional application, the Federal Circuit held that any other subject matter disclosed within the provisional application was not available as a prior art reference as of the provisional filing date. Accordingly, the Federal Circuit agreed with National Graphics that Dynamic Drinkware failed to show that the patent was invalid in view of either the prior art provisional or its subsequent patent.


Provisional applications used as prior art references can be disqualified as prior art if it can be shown that the provisional application does not support any claims in any subsequently issued patent. Showing a lack of support for the issued claims can be used advantageously to disqualify provisional applications from being used as prior art references, regardless of any other disclosure that might be contained within the provisional application. However, it remains to be seen how this holding will be interpreted by the Patent Office.