Alston & Bird
In re: Forest, No. 2023-1178 (Fed. Cir. (PTAB) Apr. 3, 2025). Opinion by Chen. Taranto, Schall and Taranto join.
In 2016 an inventor filed a claim for priority over a 1995 application. The Patent Office raised an issue in the appeal and argued that the appeal should not be allowed because the inventor had no personal stake. The Patent Office explained to the inventor that even if a patent was issued, it would have expired in 2015. This is 20 years after the priority date. Therefore, the patent would be expired before the application had been filed. The Patent Office argued the inventor could not be granted any enforceable right by an expired zero-term patent. If the Patent Office issued an expired patent, the inventor would still have “provisional rights” under 35 U.S.C. The provisional rights are valid from the date the application is published to the date the patent is issued. In this case, because the patent wouldn’t be granted until it expired, the inventor would not receive any exclusionary right. Therefore, the Federal Circuit agreed with the Patent Office and ruled that provisional rights cannot be granted. The Federal Circuit held that “provisional right are only granted when a patent will issue with exclusionary (i.e. before its expiration date) rights.”
