The Federal Circuit, in In re Riggs, Case No. 2022-1945 (Fed. Cir. Mar. 24, 2025), clarified the test for when a reference qualifies as prior art under pre-AIA 35 U.S.C. §102(e). Under pre-AIA §102(e), a published application or patent can qualify as prior art against another application or patent even if it is published after the filing date of that application or patent. Such a reference has been referred to as “secret” or “springing” prior art.
Prior to In re Riggs, the test to determine whether such a published application or patent qualified as prior art as of the date of an earlier filed priority provisional application was unclear. In re Riggs has now clarified that a reference qualifies as prior art under pre-AIA §102(e) as of the filing date of an earlier filed priority provisional application if: (1) at least one claim in the published application or patent has written description support in the provisional application; and (2) the provisional application provides written description support for the specific portions of the published application or patent identified and relied upon for invalidity.
This decision clarifies that under pre-AIA §102(e) only a single claim needs to have written description support in the provisional application to establish the provisional filing date as the filing date of a prior art reference and that the provisional application must also provide written description support for the specific portions of the prior art reference relied upon for invalidity.