As explained in a previous post, Dynamic Drinkware set forth a uniquely American rule regarding the offensive use of a US priority date. Following-up the Giacomini decision, the Federal Circuit confirmed that for a provisional application to be effective as prior art, not only does there need to be a follow-on non-provisional application claiming priority to it, but the claims of that follow-on application must be supported by the provisional application. In Dynamic Drinkware, the issue was that the provisional application had disclosure that was also included in the non-provisional filing. However, the claims of the non-provisional, directed to other (irrelevant) additional disclosure created a fatal defect as to the prior art effect of that disclosure.

Now the USPTO has determined that the application in Dynamic Drinkware was limited to pre-AIA cases. Specifically, in the precedential designation, Director Vidal has now designated as precedential a decision that find the holding in Dynamic Drinkware does not apply to AIA § 102(d). The decision explains that for prior art determinations under AIA § 102, a reference patent document need only meet the ministerial requirements of 35 U.S.C. §§ 119 and 120, and that the provisional or other earlier applications to which the reference patent claims a right of priority must describe the subject matter relied upon in the reference patent as prior art.

Whether one agrees with the idea that the AIA was intended to change the law in such a way, the end result is that for now, patent practitioners before the USPTO can no longer look for the Dynamic Drinkware defect by attacking the claims of the follow-on application as lacking priority, and instead must focus solely on the other issues.