Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in In re: Forest, No. 23-1178 (Apr. 3, 2025), dismissing for lack of jurisdiction an appeal from the Patent Trial and Appeal Board’s decision affirming an examiner’s rejection of certain claims of an individual inventor’s pending patent application.
By way of background, Mr. Donald Forest filed U.S. Patent Application No. 15/391,116 (’116 application) in 2016. But the ‘116 application claimed priority to an earlier application filed in 1995—meaning that if the ’116 application were to issue as a patent, its expiration date would be twenty years later, in 2015. In other words, the patent would already be expired on the day it issued. In view of this timeline, the USPTO argued that Mr. Forest’s appeal should be dismissed for lack of jurisdiction. In particular, the USPTO argued that Mr. Forest had no personal stake in the appeal because he could not be granted any enforceable rights by a patent grant with zero term. In response, Mr. Forest argued that he would still acquire “provisional rights” under 35 U.S.C. § 154(d) if the Patent Office issued him an expired patent, and therefore he had a personal stake in the appeal.
The Federal Circuit agreed with the USPTO and dismissed Mr. Forest’s appeal. Under 35 U.S.C. § 154(d), a patent grant confers limited “provisional rights” in addition to the exclusionary rights that exist during the patent’s term. Specifically, a patentee whose application was previously published has the right to obtain a reasonable royalty from the time the application is published until the patent issues. Mr. Forest argued that under the plain language of the statute, he should still be able to enforce provisional rights during the time between when his application is published and the time when the application issues as a patent—even if the patent would already be expired (and thus not carry any exclusionary rights) at the time it issued. The Court analyzed the statute and legislative history and concluded that Mr. Forest’s reading was incorrect. Rather, the Court held, provisional rights are granted only when a patent would issue with exclusionary rights (i.e., would issue before its expiration date). The Court, therefore, dismissed Mr. Forest’s appeal because he would not be entitled to any rights—exclusionary or provisional—based on any patent that issued on his ‘116 application.
