Federal Circuit disposition — 23-1178

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: DONALD K. FOREST,
Appellant
______________________
2023-1178
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 15/391,116.
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Decided: April 3, 2025
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D ON F OREST , Bryn Mawr, PA, pro se.
P ETER J OHN SAWERT , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Coke Morgan Stewart. Also represented by
K AKOLI C APRIHAN, AMY J. N ELSON.
______________________
Before T ARANTO, SCHALL , and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Donald Forest submitted U.S. Patent Application No.
15/391,116 (’116 application), entitled “Apparatus for Se-
lecting from a Touch Screen,” to the United States Patent
and Trademark Office (Patent Office) on December 27,
2016. The Patent Trial and Appeal Board affirmed in part
the examiner’s rejection of certain claims of the ’116 appli-
cation under 35 U.S.C. § 103 and nonstatutory double
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IN RE: FOREST 2
patenting. See Ex parte Forest, No. 2021-003780, 2022 WL
4234201, at *26 (P.T.A.B. Sept. 12, 2022). Mr. Forest ap-
peals.
The ’116 application claims priority, through a chain of
earlier-filed patent applications, to an application filed on
March 27, 1995—meaning, if the ’116 application were to
issue as a patent, then its expiration date would be twenty
years later in 2015. See 35 U.S.C. § 154(a)(2). Mr. Forest
does not dispute that he filed his ’116 application more
than a year after any resulting patent’s 2015 expiration
date. The Patent Office raises a threshold issue it charac-
terizes as a jurisdictional matter: it contends 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. In response, Mr. Forest
argues that he would still acquire “provisional rights” un-
der 35 U.S.C. § 154(d) if the Patent Office issues him an
expired patent, but he does not contest the jurisdictional
consequence if his understanding of section 154 is incor-
rect. Because we disagree with Mr. Forest’s reading of the
statute, we dismiss the appeal.
I.
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.1 Id.
§ 154(a)(2)–(3).
1 This expiration date assumes there is no patent
term adjustment, patent term extension, or terminal dis-
claimer, see 35 U.S.C. §§ 154(b), 156, 253(b)—none of which
is applicable in this appeal.
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IN RE: FOREST 3
Under 35 U.S.C. § 154(d), titled “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 pa-
tent application.” Id. § 154(d)(1)(A)(i). These provisional
rights run from when the application is published until the
patent issues. Id. § 154(d)(1). A patent application gener-
ally publishes eighteen months after its filing date. Id.
§ 122(b). Provisional rights are thus less robust than sec-
tion 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. Im-
portantly, provisional rights do not materialize until the
Patent Office issues a patent.
To illustrate a typical patent-prosecution, let’s assume
a hypothetical application was filed on January 1, 2000,
published on July 1, 2001, and issued on January 1, 2005.
In this example, upon issuance of the patent, the patentee
would be awarded provisional rights under section 154(d)
effective from July 1, 2001, to January 1, 2005, and would
be awarded exclusionary rights under section 154(a) from
January 1, 2005, through January 1, 2020.2 Thus, the
more-limited provisional rights precede the exclusionary
rights, and the provisional rights compensate for some of
the term “lost” due to the amount of time it took the patent
to issue. And no rights under the patent extend past
twenty years from the application filing date.
This appeal presents an atypical case: Based on the
date of the application to which he claims priority, Mr. For-
est applied for—and would not be granted—a patent until
after the patent’s expiration date. Mr. Forest would there-
fore never receive any exclusionary rights because the
2 Again, this expiration date assumes no patent term
adjustment, patent term extension, or terminal disclaimer.
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IN RE: FOREST 4
patent would issue after the twenty-year term has ex-
pired.3 See 35 U.S.C. § 154(a)(2). Effectively, Mr. Forest
asks the Patent Office to grant him an expired patent.
II.
The Patent Office contends we can reject Mr. Forest’s
appeal without needing to address the merits of the Board’s
decision because any patent that would issue from the ’116
application would be expired, giving Mr. Forest no patent
rights. “[A]t all stages of litigation, a plaintiff must main-
tain a personal interest in the dispute.” Apple Inc. v. Qual-
comm Inc., 17 F.4th 1131, 1137 (Fed. Cir. 2021) (citation
omitted). According to the Patent Office, Mr. Forest has no
interest in this appeal.4
Mr. Forest does not dispute that his patent, if granted,
would have no exclusionary rights, but he argues that his
patent, if granted, would receive provisional rights. In
Mr. Forest’s view, because provisional rights run from the
date of publication to patent issuance, the patentee is al-
ways entitled to provisional rights—even if the patent is-
sues ten, twenty, or even thirty years or longer after the
patent’s expiration date. What’s more, according to
Mr. Forest, the twenty-year patent term codified in 35
U.S.C. § 154(a)(2) has no bearing on the provisional-rights
term. Under this view, the patentee could actually benefit
from having a patent issue after its expiration date because
the patent’s provisional-rights term would extend beyond
the patent’s twenty-year term. Indeed, if we were to adopt
3 We recognize that a patent does not receive the full
twenty-year term because of the temporal delay from the
application to the issuance of the patent. We use the
phrase “twenty-year term” for simplicity.
4 Mr. Forest has identified no potential interest
other than receiving a patent with the patent rights af-
forded by section 154.
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IN RE: FOREST 5
Mr. Forest’s understanding of the statute, nothing in sec-
tion 154 would stop him from receiving an expired patent
with provisional rights while still pursuing another contin-
uation application to gain a second round of provisional
rights covering a subsequent time period through a later,
second expired patent.
This appeal therefore turns on a single question of stat-
utory interpretation: 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)? For the following rea-
sons, we hold that provisional rights are granted only when
a patent would issue with exclusionary rights (i.e., would
issue before its expiration date).
The Supreme Court has summarized our role in statu-
tory interpretation as follows:
It is . . . our task to determine the correct reading
of [the relevant statute]. If the statutory language
is plain, we must enforce it according to its terms.
But oftentimes the “meaning—or ambiguity—of
certain words or phrases may only become evident
when placed in context.” So when deciding
whether the language is plain, we must read the
words “in their context and with a view to their
place in the overall statutory scheme.” Our duty,
after all, is “to construe statutes, not isolated pro-
visions.”
King v. Burwell, 576 U.S. 473, 486 (2015) (citations omit-
ted); see also Loper Bright Enters. v. Raimondo, 603 U.S.
369, 392 n.4 (2024) (“[S]tatutes can be sensibly understood
only ‘by reviewing text in context.’” (quoting Pulsifer v.
United States, 601 U.S. 124, 133 (2024))).
Section 154(d)(1) provides:
(d) Provisional Rights.—
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IN RE: FOREST 6
(1) In general.—In addition to other rights
provided by this section, a patent shall in-
clude the right to obtain a reasonable roy-
alty from any person who, during the
period beginning on the date of publication
of the application for such patent under
section 122(b) . . . and ending on the date
the patent is issued—
(A)(i) makes, uses, offers for sale, or
sells in the United States the in-
vention as claimed in the published
patent application or imports such
an invention into the United
States; or
(ii) if the invention as claimed in
the published patent application is
a process, uses, offers for sale, or
sells in the United States or im-
ports into the United States prod-
ucts made by that process as
claimed in the published patent ap-
plication; and
(B) had actual notice of the pub-
lished patent application and, in a
case in which the right arising un-
der this paragraph is based upon
an international application desig-
nating the United States that is
published in a language other than
English, had a translation of the in-
ternational application into the
English language.
35 U.S.C. § 154(d).
The title of this subsection is “Provisional Rights.” The
word “provisional” is an adjective defined as “serving for
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IN RE: FOREST 7
the time being” or “temporary.” Provisional, MERRIAM -
WEBSTER . COM D ICTIONARY , https://www.merriam-web-
ster.com/dictionary/provisional (last visited Mar. 14, 2025).
This definition suggests that provisional rights are tempo-
rary, placeholder rights existing for only an interim period.
That is, provisional rights exist for a temporary period of
time until some other right comes into effect and replaces
them. The only other right identified in section 154 is ex-
clusionary rights. See Oil States Energy Servs., LLC v.
Greene’s Energy Grp., LLC, 584 U.S. 325, 338 (2018) (“As a
public franchise, a patent can confer only the rights that
‘the statute prescribes.’” (citation omitted)). The title of
section 154(d) thus suggests that provisional rights do not
exist simply in a vacuum but instead necessarily precede
exclusionary rights, and exclusionary rights are available
only until the patent expires, see 35 U.S.C. § 154(a)(2). For
the provisional rights to precede the exclusionary rights,
then, the provisional rights would have to be granted to a
patent that issues before the patent expires. Were we to
conclude otherwise, as Mr. Forest seeks, section 154(d)’s
provisional rights would never be a temporary, interim
right replaced by a different right—the traditional exclu-
sionary right. That reading contradicts the plain meaning
of “provisional.” The title therefore supports that provi-
sional rights can be granted to only a patent that issues
before its expiration date.
Although “titles and headings are permissible indica-
tors of meaning,” Antonin Scalia & Bryan A. Garner, Read-
ing Law: The Interpretation of Legal Texts 221 (2012), we
recognize “they cannot undo or limit that which the text
makes plain,” Bhd. of R.R. Trainmen v. Balt. & Ohio R.R.
Co., 331 U.S. 519, 529 (1947); see also Carter v. United
States, 530 U.S. 255, 256 (2000) (“[T]he title of a statute is
of use only when it sheds light on some ambiguous word or
phrase in the statute itself.”). Here, however, the statutory
text also supports this understanding that provisional
rights precede the exclusionary rights and therefore are
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IN RE: FOREST 8
available only when a patent issues before its expiration
date.
For one, provisional rights attach to “the invention as
claimed in the published patent application,” 35 U.S.C.
§ 154(d)(1)(A)(i)–(ii), whereas exclusionary rights attach to
the issued patent, 35 U.S.C. § 154(a)(1). The published pa-
tent application necessarily precedes the issued patent.5
And if the published patent application precedes the issued
patent, then the rights based upon the published patent
application (the provisional rights) should likewise precede
the rights based upon the issued patent (the exclusionary
rights).
But more on point, certain words of the statute would
be read out of the text if a patent could issue with provi-
sional rights but without exclusionary rights. “In constru-
ing a statute we are obliged to give effect, if possible, to
every word Congress used.” Reiter v. Sonotone Corp., 442
U.S. 330, 339 (1979). In enacting section 154(d), Congress
specified that provisional rights are granted “[i]n addition
to other rights provided by this section.” 35 U.S.C.
§ 154(d)(1). As mentioned, the only other rights enumer-
ated in section 154 are the exclusionary rights. It follows
that provisional rights are conferred with and “in addition
to” exclusionary rights. If no exclusionary rights can be
granted (because, as in this case, the application is well
past the expiration date), then so, too, the attendant provi-
sional rights are unavailable. Put another way, there are
no “other rights” the provisional rights can be “in addition
to.”
This understanding that provisional rights precede,
are replaced by, and are granted with exclusionary rights
5 Under 35 U.S.C. § 122(b)(2)(A)(i), the application
will not publish if it is “no longer pending” because the pa-
tent was issued prior to the would-be publication date.
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IN RE: FOREST 9
is also in accord with how patent examination practice typ-
ically works. As in our “typical example” described above,
patents generally issue before their expiration date. In-
deed, we are unaware of any example of a patent issuing
after its expiration date. So in the “typical example” a pa-
tent is granted with a period of provisional rights (assum-
ing the application was published) followed by a period of
exclusionary rights.
This understanding that provisional rights are rights
that precede and are replaced by exclusionary rights also
comports with other uses of “provisional” in patent law and
Title 35, Part II of the U.S. Code. For instance, a patent
applicant can submit a “provisional application” under
35 U.S.C. § 111(b)(1) before it submits a “written applica-
tion,” which is commonly referred to as a “non-provisional
application,” under 35 U.S.C. § 111(a)(1). “As a part of the
Uruguay Round Agreements Act, the Patent Statute was
amended to allow applicants for United States patents to
file provisional applications that could provide the priority
date for a non-provisional utility application filed within
one year of the provisional.” New Railhead Mfg., L.L.C. v.
Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (cit-
ing 35 U.S.C. § 111(b)). Thus, in the context of section 111,
a provisional application is a temporary, stand-in applica-
tion that precedes the non-provisional application and does
not lead to a conferral of rights on the patentee unless a
patent issues from the subsequent non-provisional applica-
tion.
Mr. Forest’s only argument to the contrary is that the
text is clear and must be given effect. Specifically, he con-
tends that the statute explicitly provides that provisional
rights “begin[] on the date of publication of the application
for such patent” and “end[] on the date the patent is is-
sued.” Appellant’s Reply Br. 9; 35 U.S.C. § 154(d)(1). Ac-
cording to Mr. Forest, applying the text as written means
that the provisional rights are granted for that period,
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IN RE: FOREST 10
regardless of how much time elapses between publication
and issuance.
This argument in our view engages in an overly narrow
statutory analysis. Mr. Forest asks us to focus our analysis
on only two phrases marking the beginning and end of the
provisional-rights term. But even if we assume that the
phrases “begin[] on the date of publication of the applica-
tion for such patent” and “end[] on the date the patent is
issued” are unambiguous, “[o]ur duty . . . is to construe
statutes, not isolated provisions”—let alone isolated
phrases within those provisions. King, 576 U.S. at 486 (in-
ternal quotation marks and citation omitted). “So when
deciding whether the language is plain, we must read the
words in their context and with a view to their place in the
overall statutory scheme.” Id. (internal quotation marks
and citation omitted). As described above, the statute,
when read in context, dictates that provisional rights must
be granted with and precede the grant of exclusionary
rights.
We also note that a patent’s term is a fundamental as-
pect of patent law. The Constitution mandates that pa-
tents be granted only “for limited Times.” U.S. Const.
art. I, § 8, cl. 8. In the modern statute, Congress effectu-
ated 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 applica-
ble priority date. 35 U.S.C. § 154(a)(2)–(3). That statutory
command clearly presupposes that a patent term’s begin-
ning date occurs before its ending date. But that presuppo-
sition is not present here. In effect, Mr. Forest seeks some
form of patent rights that go beyond the statute’s twenty-
year end date, but we have explained that the Patent Office
“may not grant . . . a patent right extending beyond the
statutorily authorized term.” Institut Pasteur & Universite
Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1344
(Fed. Cir. 2013) (citing 35 U.S.C. §§ 154, 271(a)).
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IN RE: FOREST 11
Mr. Forest argues that provisional rights are an excep-
tion to a patent’s twenty-year term. In fact, he claims it is
an unbounded exception that lasts from the date the patent
application is published until the patent issues—no matter
how long that time period is. Mr. Forest presents a “fun-
damentally surprising” interpretation pertaining to a key,
constitutionally driven component of the grant of a patent,
so we would have expected Congress to have clearly ad-
dressed the issue if we were to adopt his interpretation.
Jones v. Hendrix, 599 U.S. 465, 492 (2023); see also id.
(“Typically, we find clear-statement rules appropriate
when a statute implicates historically or constitutionally
grounded norms that we would not expect Congress to un-
settle lightly.”); cf. Whitman v. Am. Trucking Ass’ns, 531
U.S. 457, 468 (2001) (“Congress, we have held, does not
alter the fundamental details of a regulatory scheme in
vague terms or ancillary provisions—it does not, one might
say, hide elephants in mouseholes.”).
Yet, Congress has not provided a clear indication that
provisional rights can exceed a patent’s twenty-year term.
In fact, as explained above, the statutory text suggests the
opposite. And nothing in the legislative history indicates
otherwise. The only legislative history the parties identi-
fied are statements made by patent stakeholders to Con-
gress rather than statements made by Congress. But each
of those statements support that provisional rights would
not extend beyond the patent’s twenty-year term. See, e.g.,
The Patent System Harmonization Act of 1992: Joint Hear-
ing on S. 2605 and H.R. 4978 Before the Subcomm. on
Pats., Copyrights & Trademarks of the S. Comm. on the Ju-
diciary and the Subcomm. on Intell. Prop. & Jud. Admin.
of the H. Comm. on the Judiciary, 102nd Cong. 398 (1993)
(“The combination of expiration at 20 years from the initial
U.S. filing and provisional rights will maintain the current
length of protection for inventions, and eliminate the pos-
sibility that exists under current law of having patent
terms extend for a period much longer than 20 years after
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IN RE: FOREST 12
the invention is commercialized.”); Oversight of the Patent
and Trademark Office: Hearing on S. 1854 Before the Sub-
comm. on Pats., Copyrights & Trademarks of the S. Comm.
on the Judiciary, 103rd Cong. 40 (1995) (“Eighteen-month
opening or publication with provisional rights comple-
ments the 20-year term measured from filing. A reasona-
ble royalty after publication may compensate the patentee
for time lost from the 20-year patent term . . . .”); Patents
Legislation: Hearings on H.R. 359, H.R. 632, H.R. 1732,
and H.R. 1733 Before the Subcomm. on Cts. & Intell. Prop.
of the H. Comm. on the Judiciary, 104th Cong. 260 (1996)
(“The opportunity for provisional royalties is another posi-
tive aspect of publication . . . [and] means that an inven-
tor’s right to royalties will be a full 18.5 years regardless of
when the patent issues.”).
III.
For the foregoing reasons, this appeal is dismissed.
DISMISSED
COSTS
No costs.
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