In Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Fed. Cir. Aug. 10, 2026), the prior-art question turned on a date. The date, in turn, depended on one word in the governing statute: “entitled.”
Under § 102(d)(2) of the Patent Act, a patent or published application may rely on the filing date of an earlier application only if it is “entitled to claim a right of priority” under § 119. The Patent Trial and Appeal Board had interpreted that language as requiring only compliance with the procedural, or “ministerial,” requirements for claiming priority, together with a showing that the provisional described the subject matter relied upon as prior art. The Federal Circuit rejected that interpretation. In the court’s view, Congress’s use of “entitled” requires substantive entitlement to priority, not merely the procedural act of making a priority claim. The Federal Circuit therefore held that a reference seeking the benefit of a provisional filing date under the AIA must establish written-description support in the provisional for at least one published claim of the reference.
Dental Monitoring thus gives substantive effect to “entitled to claim”: it rejects the USPTO’s post-AIA ministerial-requirements framework and confirms that the claim-level written-description requirement recognized in Dynamic Drinkware [1] applies under AIA § 102(d)(2).
The Date Between the Dates
Align relied on U.S. Patent Application Publication No. 2021/0068923 to Carrier (“Carrier”) as prior art against Dental Monitoring’s U.S. Patent No. 10,755,409. The timing was critical: Carrier’s provisional application was filed before the effective filing date of Dental Monitoring’s patent, while Carrier’s non-provisional application was filed after it. Carrier therefore qualified as prior art only if it was entitled to reach back to the provisional filing date.
Before the Board, Dental Monitoring argued that Dynamic Drinkware required Carrier’s provisional to provide written-description support for at least one published Carrier claim. Align relied on the PTAB’s precedential decision in Penumbra, Inc. v. RapidPulse, Inc.,[2] which held that the claim-level inquiry did not apply under AIA § 102(d). Under Penumbra, a reference needed to satisfy the ministerial requirements for claiming priority, while the earlier application separately needed to describe the subject matter relied upon as prior art.
The Board applied Penumbra, found that Carrier’s provisional described the subject matter relied upon by Align, and accorded Carrier the provisional filing date without determining whether the provisional supported a published Carrier claim. The appeal therefore presented a focused statutory question: does § 102(d)(2)’s phrase “entitled to claim a right of priority” incorporate substantive written-description requirements, or only the formal requirements for making a priority claim?
What “Entitled to Claim” Requires
The Federal Circuit began with the text of § 102(d)(2). That provision gives a patent or published application an earlier effective filing date if it is “entitled to claim a right of priority” under § 119 or entitled to claim the benefit of an earlier filing date under one of the other listed statutes. The court treated “entitled” as operative statutory language, not as a procedural formality.
Section 119(e)(1), in turn, provides that a non-provisional application is entitled to the benefit of a provisional filing date only when the invention disclosed in the later application was disclosed in the provisional “in the manner provided by” § 112(a). Reading the provisions together, the Federal Circuit concluded that § 102(d)(2) incorporates § 119(e)(1)’s substantive written-description requirement. Nothing in the statutory text creates a less demanding standard merely because the earlier date is being asserted for prior-art purposes.
The distinction between claiming priority and being entitled to claim priority was central to the court’s reasoning. A reference may identify a provisional application in its priority chain and satisfy the procedural requirements for making that claim. But those acts do not establish substantive entitlement to the provisional date. According to the court, the Board’s interpretation effectively read § 102(d)(2) as though it applied whenever a reference merely “claims” or “asserts” priority, thereby depriving “entitled to” of independent meaning.
The priority claim on the face of the reference therefore identifies the earlier date being asserted. It does not, by itself, establish that the reference is entitled to receive it.
The Federal Circuit held that Align had to show that Carrier’s provisional provided written-description support for at least one published Carrier claim. Because the Board had treated that inquiry as unnecessary under Penumbra, it had made no corresponding factual finding. The court therefore vacated and remanded rather than deciding whether Carrier ultimately qualified as prior art.
Dynamic Drinkware Survives the AIA
Align argued that Dynamic Drinkware should remain confined to the pre-AIA version of § 102. Dynamic Drinkware had expressly declined to interpret the AIA’s impact on the priority rule because the case involved pre-AIA § 102(e).
The Federal Circuit rejected the inference Align drew from that reservation. Declining to decide an issue is not the same as deciding that the earlier requirement no longer applies. The concern underlying Dynamic Drinkware remained relevant: a party should not be able to backdate a prior art reference through an earlier application that would not have supported the reference’s claimed invention.
Importantly, Dental Monitoring did not simply transplant a pre-AIA rule into the AIA. The court reached the claim-level requirement through the post-AIA statutory text itself: § 102(d)(2) incorporates § 119’s substantive priority requirements, and § 119(e)(1) incorporates § 112(a). Dental Monitoring thus establishes under the AIA the claim-level requirement recognized in Dynamic Drinkware, rather than merely extending that pre-AIA decision by analogy. The court also noted that its earlier Rule 36 affirmance of Penumbra did not endorse the Board’s reasoning and carried no precedential weight on the statutory question.
Two Distinct Inquiries for the Earlier Date
Read together, § 102(d)(2) and Dental Monitoring suggest two distinct inquiries when a reference relies on an earlier application for its prior-art date.
First, is the reference substantively entitled to claim priority under § 119(e)? Under Dental Monitoring, that requires § 112(a) written-description support in the provisional for at least one published claim of the reference.
Second, does the earlier application describe the particular subject matter for which the earlier prior-art date is sought? That inquiry follows directly from § 102(d), which assigns an effective filing date “with respect to any subject matter described” in the reference as of the filing date of the earliest qualifying application that “describes the subject matter.”
The two inquiries address different issues. Establishing that a provisional describes the subject matter being relied upon does not establish that the reference is substantively entitled to priority. Nor does claim-level entitlement answer the separate question of when the particular prior-art disclosure was effectively filed.
What Dental Monitoring Did Not Decide
Dental Monitoring resolves the legal standard for claim-level entitlement, but it did not determine whether Carrier ultimately qualifies as prior art. The Federal Circuit remanded for the Board to make the missing written-description finding as to a published Carrier claim.
The opinion also does not define the standard governing § 102(d)’s separate requirement that the earlier application “describes the subject matter.” The Board had found that Carrier’s provisional described the subject matter relied upon by Align under the Penumbra framework, and the Federal Circuit did not separately analyze or refine the standard underlying that finding. The Federal Circuit’s pre-AIA decision in In re Riggs [3] provides related guidance. Riggs held that support for a published claim does not automatically give every disclosure in the later application the provisional date; the particular disclosure relied upon as prior art must itself have written-description support in the provisional. But Dental Monitoring neither cites Riggs nor separately construes § 102(d)’s requirement that the earlier application “describes the subject matter.” The opinion therefore does not expressly decide whether that language incorporates the same written-description standard that Riggs applied under pre-AIA law.
Practical Implications: Building and Testing the Earlier Date
Dental Monitoring rejects the USPTO’s ministerial treatment of claim-level entitlement and requires a substantive written-description inquiry. The practical consequence is a two-track priority analysis, both for parties relying on an earlier date and for those testing it.
For a party relying on the earlier date, the analysis should identify at least one published claim and map its limitations to the provisional under the written-description standard. It should separately identify the paragraph, figure, embodiment, or technical feature being relied upon as prior art and show where that subject matter appears in the provisional.
For applicants and patent owners challenging the earlier date, the two inquiries can be tested independently. Does the provisional support at least one published claim of the reference? Does it also describe the particular subject matter being used as prior art? If the record establishes only the formal priority relationship, supports a claim but not the relied-upon teaching, or identifies the relevant teaching without establishing claim-level entitlement, the earlier date may not have been adequately established. In prosecution, the threshold question is whether the reference needs its provisional date to qualify as prior art. If the applicant’s effective filing date falls between the reference’s provisional and non-provisional dates, reviewing the provisional can become a threshold step before, or alongside, addressing the substantive anticipation or obviousness analysis.
The same framework applies in due diligence, validity analysis, pre-litigation review, and freedom-to-operate assessments that involve the validity or prior-art effect of a potentially relevant patent reference. The stated priority date should not be accepted at face value. The review should distinguish among the formal priority claim, substantive entitlement to the earlier date, and the earliest application that describes the particular teaching under evaluation. Different portions of the later publication may trace back to different points in the priority chain, which can affect invalidity positions, competitive filing assessments, and broader portfolio or clearance analysis.
On the drafting side, the consequence is that a priority chain may not provide a single prior-art date for everything disclosed in the resulting publication. Claim-level support in a provisional may establish substantive entitlement to priority, while particular subject matter added only in a later application may receive a later effective filing date for prior-art purposes. Drafting the earliest application with both future claims and potentially significant technical disclosures in mind can therefore affect not only the applicant’s own priority position, but also when particular teachings in the resulting publication may become available as prior art.
An Earlier Date Is Not Merely Claimed
Dental Monitoring gives substantive force to the words “entitled to claim a right of priority” in § 102(d)(2). A patent or published application does not receive its provisional filing date for prior-art purposes merely because it identifies the provisional in its priority chain or satisfies the procedural requirements for claiming priority. The party relying on the earlier date must establish substantive entitlement under § 119(e), including written-description support in the provisional for at least one published claim of the reference.
The decision settles that claim-level requirement under the AIA, while leaving the precise contours of § 102(d)’s separate subject-matter inquiry less clearly defined. Practitioners should therefore ask two distinct questions: whether the reference is entitled to the earlier date, and whether the earlier application describes the particular subject matter being relied upon as prior art.
The priority information on the face of the reference identifies the date being claimed. Dental Monitoring makes clear that the underlying disclosure determines whether the reference has earned it.
[1] Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).
[2] Penumbra Inc. v. RapidPulse, Inc., IPR2021-01466, 2023 WL 2605070 (PTAB Mar. 10, 2023)
[3] In re Riggs, 131 F.4th 1377 (Fed. Cir. 2025)
About the Author
Brett J. Smith is part of Brooks Kushman’s Patent Prosecution practice, helping clients secure and manage domestic and international patent portfolios across a wide range of technologies. He advises companies on Intellectual Property Due Diligence, Licensing & Agreements, freedom-to-operate analyses, and intellectual property strategy designed to support long-term business objectives. Brett works with clients in industries including Artificial Intelligence & Data-Driven Technologies, Automation & Robotics, Automotive and Mobility Brands & Technology, Battery Technology, Electrical & Computer Technology, and Medical Devices & Healthcare Brands. Drawing on more than a decade of intellectual property experience and a background in mechanical engineering, he develops practical strategies that help clients protect innovation, manage risk, and maximize the value of their intellectual property assets.
About Brooks Kushman P.C.
Founded in 1983, Brooks Kushman P.C. has built a national reputation as a premier intellectual property and technology law firm. We accomplish this with the understanding that the most effective IP solutions come from putting great minds together – our clients and our own. With offices across the country, we forge strong relationships with corporations, small to medium-sized businesses, and leading universities across the country.
Brooks Kushman counts a number of Fortune 100 Corporations across a variety of industries among its clients. Our attorneys have a deep understanding and broad range of experience in a variety of industries and technologies, including automotive, AI & data, automation, consumer electronics, manufacturing, medical device, computer technology, aerospace, chemicals, biotechnology, retail, food & beverage, green technology, fintech, and more. We are also recognized by leading legal publications and rankings, including, Best Lawyers, Law360, Intellectual Asset Management, Managing Intellectual Property, and World Trademark Review. For more information, please visit www.BrooksKushman.com.
