The Federal Circuit has ruled that under 35 U.S.C. § 154(d) provisional rights are only granted to a patentee when a patent is issued with exclusionary rights.
The case is In re: Forest.
As the court explained, inventor Donald Forest submitted US Patent Application No. 15/391,116, entitled “Apparatus for Selecting from a Touch Screen,” to the United States Patent and Trademark Office (USPTO) in 2016.
The Patent Trial and Appeal Board (PTAB or Board) affirmed in part the examiner’s rejection of certain claims of the ’116 application under 35 U.S.C. § 103 and non-statutory double patenting.
The ’116 application claimed priority, through a chain of earlier-filed patent applications, to an application filed on March 27, 1995. This means that if the ’116 application were to issue as a patent, then its expiration date would be twenty years later in 2015.
Forest didn’t dispute that he filed his ’116 application in 2016 — more than a year after any resulting patent’s 2015 expiration date.
The Patent Office contended that, “given the circumstances, Mr. Forest has no personal stake in this appeal because he cannot be granted any enforceable rights by a patent grant with zero term.”
Forest countered that he would still acquire “provisional rights” under 35 U.S.C. § 154(d) if the Patent Office issued him an expired patent.
The court noted that
Under 35 U.S.C. § 154(a), every patent grants to the patentee “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States.” 35 U.S.C. § 154(a)(1). These exclusionary rights begin when the patent issues and end twenty years after the application date or applicable priority date
(This expiration date assumes there is no patent term adjustment, patent term extension, or terminal disclaimer.)
Under 35 U.S.C. § 154(d) (“Provisional Rights”), a patent grant also confers an additional, but more limited, right—the right to obtain a reasonable royalty from any person who “makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application.”
These provisional rights run from when the application is published until the patent issues, and a patent application generally publishes around eighteen months after its filing date.
As the court explained,
Provisional rights are thus less robust than section 154(a) exclusionary rights, and they are “provisional” in the sense that the rights end and are replaced by the statutory exclusionary rights once a patent issues. Importantly, provisional rights do not materialize until the Patent Office issues a patent.
The court noted how the case was atypical:
Based on the date of the application to which he claims priority, Mr. Forest applied for—and would not be granted—a patent until after the patent’s expiration date. Mr. Forest would therefore never receive any exclusionary rights because the patent would issue after the twenty-year term has expired.
Effectively, said the court, Forest was asking the Patent Office to grant him an expired patent.
The case raised the question:
Under 35 U.S.C. § 154, 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)?
The court noted that a patent’s term is a fundamental aspect of patent law. The Constitution mandates that patents be granted only “for limited Times.”
Said the court,
Congress effectuated that constitutional mandate by explicitly providing for a term “beginning on the date on which the patent issues and ending 20 years from the” application date or applicable priority date.
And, said the court, “That statutory command clearly presupposes that a patent term’s beginning date occurs before its ending date.”
The court thus held that provisional rights are granted only when a patent would issue with exclusionary rights (i.e., would issue before its expiration date).
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