IP Law Daily, PATENT—Fed. Cir.: Individual’s appeal over pending application for already-expired touchscreen patent dismissed, (Apr 3, 2025)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Provisional rights under §154(d) apply only when a patent issues with enforceable rights; here, the application could only yield an expired patent, leaving no legally cognizable interest.

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit dismissed an individual’s appeal from a decision of the Patent Trial and Appeal Board (PTAB), holding that he lacked a legally cognizable interest in obtaining a patent that would issue after its statutory expiration date. The court ruled that provisional rights under 35 U.S.C. §154(d) are granted only where a patent issues with enforceable exclusionary rights under §154(a) and that issuance of an expired patent would confer no rights at all. Because the individual’s application, if allowed, would result in a patent already expired by operation of law, the court found the appeal moot and dismissed it (In re Forest, No. 23-1178 (Fed. Cir. Apr. 3, 2025)).

Background. The appellant, inventor Donald Forest, filed U.S. Patent Application No. 15/391,116 (the ’116 application) in 2016, titled "Apparatus for Selecting from a Touch Screen." The application claimed priority through a series of continuation applications to a parent filed in 1995, meaning any patent issuing from the '116 application would expire twenty years later, in 2015, under 35 U.S.C. §154(a)(2). Forest's application was still pending well after that date.

In a September 2022 decision, the PTAB partially affirmed the examiner's rejection of various claims under 35 U.S.C. §103 and for non-statutory double patenting, leading Forest to appeal. In response, the U.S. Patent and Trademark Office (USPTO) argued that Forest lacked any viable legal interest because any patent that might be issued would already be expired and thus devoid of enforceable rights.

Forest did not dispute that the patent term had lapsed but asserted that he would still be entitled to “provisional rights” under §154(d)—limited rights to obtain reasonable royalties for infringing acts occurring between the publication of the application and its issuance. The USPTO rejected this view, framing the issue as a threshold jurisdictional defect that made any merits review unnecessary.

Exclusionary rights and statutory expiration. The Federal Circuit began by affirming that §154(a) governs the core exclusionary rights granted by a U.S. patent, lasting 20 years from the effective filing date. Where that period has expired prior to issuance, the statute confers no rights. The court reiterated that the constitutional foundation of patent law, as provided in Article I, § 8, clause 8, limits patents to “limited Times,” and the statute reflects this by strictly defining the patent term.

Citing Institut Pasteur & Université Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1344 (Fed. Cir. 2013), the court reaffirmed that the USPTO lacks authority to grant patent rights that extend beyond the twenty-year statutory term. Because Forest's application sought the issuance of a patent that would already be expired, the court concluded that the USPTO could not lawfully confer any exclusionary rights, rendering the appeal constitutionally and statutorily moot.

Provisional rights must precede enforceable patent term. The court rejected Forest’s core argument that provisional rights under §154(d) could still be granted even if no exclusionary rights under §154(a) were available. Forest contended that so long as the statutory criteria for provisional rights were met—namely, publication of the application and subsequent issuance of a patent—he was entitled to reasonable royalties for acts of pre-issuance infringement, even if the patent expired before issuance.

The Federal Circuit disagreed, holding that provisional rights are, by definition, temporary rights that precede and are replaced by full exclusionary rights. Quoting the statute’s language that provisional rights exist “[i]n addition to other rights provided by this section,” the court concluded that §154(d) presupposes the issuance of a patent with enforceable §154(a) rights. Without the latter, the former cannot arise. The court observed that Forest’s reading would untether provisional rights from the temporal boundaries of the patent system, allowing royalty rights to stretch arbitrarily beyond the statutory term—an outcome inconsistent with both statutory text and constitutional limits.

Statutory structure and usage of “provisional.” The court emphasized the statutory structure and linguistic context, noting that the word "provisional" implies a placeholder or interim status, not a freestanding entitlement. It analogized to provisional patent applications under §111(b), which exist only as precursors to regular utility applications and do not, by themselves, confer enforceable rights unless followed by a non-provisional filing. Likewise, provisional rights under §154(d) exist only to fill the gap between publication and issuance, compensating for delays in the grant of exclusionary rights—not to replace them entirely.

The appellate court also warned that accepting Forest’s view would open the door to strategic abuses, such as serially filing continuation applications that result in repeated “expired” patents, each conferring a new window of provisional rights without any associated enforceable term. Such a construction, the court noted, would invert the logic of §154 and be at odds with Congressional intent.

Legislative context and historical interpretation. Although the court did not rest its holding on legislative history, it noted that the history available—including testimony from stakeholders during the enactment of the 1995 patent term reforms—consistently framed provisional rights as limited tools designed to complement the new twenty-year term, not to extend it. One statement cited from a 1993 congressional hearing clarified that the statutory combination of expiration at 20 years and provisional rights was meant to “eliminate the possibility that exists under current law of having patent terms extend for a period much longer than 20 years.”

No patent term, no rights, no case. Having concluded that Forest could not receive either exclusionary or provisional rights under the statutory scheme, the Federal Circuit found that he lacked any legally cognizable interest in the appeal. Because a patent issued from the '116 application would confer no enforceable rights, Forest's challenge to the PTAB's rejection of his claims no longer presented a live case or controversy. Accordingly, the court dismissed the appeal for lack of subject-matter jurisdiction. No costs were awarded.

The Case is No. 23-1178.

Judge: Chen, R.

Attorneys: Don Forest, pro se. Peter John Sawert, U.S. Patent and Trademark Office, for Coke Morgan Stewart.

Cases: Patent FedCirNews USPTO GCNNews