Can there be provisional patent rights in the absence of patent rights?
That was the question in In re Forest, No. 2023-1178 (Fed. Cir. April 3, 2025), and the Federal Circuit answered it in the negative. Pro se applicant Don Forest filed an application in 2016 for an invention involving an apparatus for selecting from a touch screen, claiming priority to a long chain of applications dating back to 1995. Given that the term of any patent issuing from the application would expire in 2015, before even the filing date of the application, see 35 USC 154(a)(2) (patent expires 20 years from earliest priority date 35 USC 120), what was the point?
There was method behind Don Forest’s (apparent) madness – he was chasing provisional patent rights. These include the right to recover reasonable royalties for infringement of “during the period beginning on the date of publication of the application … and ending on the date the patent is issued,” provided that “the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application,” 35 USC 154(d)(1)-(2).
The rejection of Forest’s claims on grounds of obviousness and double patenting was affirmed by the Patent Trial and Appeal Board (PTAB), and he duly appealed to the Federal Circuit. There the USPTO argued that there was no need to even reach the merits of the rejections, because Forest had no interest in having an expired patent issued to him. Forest disagreed – not only would the issuance of a patent give him the opportunity for royalties based on provisional rights from this application, but it would enable him to file another continuation application (and perhaps additional continuation applications) to seek further provisional rights.
This set up what the Federal Circuit described as “a single question of statutory interpretation”: “does a patent include the grant of provisional rights when the patent would issue after its expiration date (and thus would issue without any exclusionary rights)?” Well, no.
In answering the question the Federal Circuit looked to the meaning of the word “provisional” (provisional rights “exist for a temporary period of time until some other right [the exclusionary right of an issued patent] comes into effect and replaces them”); the existence of other language in the statute that would be superfluous if provisional rights could exist on their own (provisional rights are in “addition to other rights,” which can only mean the exclusionary patent rights of an issued patent); and that granting Forest provisional rights in this situation would allow patent protection to extend beyond the statutorily specified term of 20 years from the earliest priority date. Forest’s interpretation of the statute would allow provisional rights to be invoked again and again in a series of continuation applications after the exclusionary patent term had expired.
The Federal Circuit thus dismissed Forest’s appeal without reaching the merits of rejections that had been affirmed by the PTAB.
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