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US appeals court rejects patentee’s ‘provisional rights’ jurisdiction theory

( April 3, 2025, 19:50 GMT | Official Statement) -- MLex Summary: A patent application filed in 2016 and rejected in 2022 which, were it to be revived and granted, would result in an already-expired patent bestows no provisional rights on the patentee, the US Court of Appeals for the Federal Circuit ruled. In a precedential decision, a three-judge panel said provisional rights — which permit the recovery of royalties between when an application is published and when a patent is issued — exist only when the patent would issue with exclusionary rights. Their ruling leaves in place the US Patent and Trademark Office’s 2022 rejection of an application by Donald K. Forest to patent an apparatus for selecting from a touchscreen, which traced its priority chain to an application filed in March 1995, resulting in an expiration date of 2015. “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 provisional rights are unavailable,” the Federal Circuit concluded.See attached document....

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