Authored by: Jeremy J. Gustrowsky
In a recent decision, the Federal Circuit clarified that “provisional rights” to a patent cannot exist if the patent itself is already expired by the time it issues. The case involved Donald K. Forest, who filed U.S. Patent Application No. 15/391,116 in 2016, claiming priority back to an application from 1995. If granted, the patent would have expired in 2015—over a year before Forest even filed his application. Forest argued that, even if his patent would be expired upon issuance, he should still be entitled to provisional rights, which can sometimes allow inventors to collect royalties for certain uses of their invention before the patent actually issues.
The court disagreed, explaining that provisional rights are meant to be temporary and only exist to “bridge the gap” between when a patent application is published and when the patent is granted. These rights are intended to give inventors some protection during the waiting period before the patent issues, but they are not a substitute for the actual patent rights, which include the power to exclude others from making, using, or selling the invention. Once a patent is expired, there are no exclusionary rights left to grant, and therefore, provisional rights cannot exist on their own.
The Federal Circuit emphasized that the law only allows patents—and any associated rights—to last for a limited time, usually 20 years from the earliest filing date. Allowing provisional rights to continue after a patent’s expiration would contradict both the statute and the Constitution’s requirement that patents be granted for “limited times.” The court also noted that Congress never intended for provisional rights to extend beyond the patent’s normal term, and the legislative history supports this interpretation.
In short, if a patent issues after its expiration date, neither exclusionary rights nor provisional rights are available to the applicant. This decision closes the door on attempts to use provisional rights as a backdoor to extended patent protection, ensuring that all patent rights remain strictly time-limited.