Holding: Provisional rights for a patent are only granted when the patent issues before its expiration date.
Mr. Forest filed US Patent Application No. 15/391,116 pertaining to an apparatus for selecting from a touch screen on December 27, 2016. The ‘116 Application claimed priority to an application that was filed on March 27, 1995. Therefore, without any patent term adjustment or patent term extension, the filing date of the ‘116 Application was after its twenty-year expiration date. Some claims of the ‘116 Application were found to be unpatentable under Section 103 and for nonstatutory double patenting. However, Mr. Forest still brought this appeal, arguing that if the ‘116 Application were to be granted, although it would be expired, he would acquire “provisional rights” under 35 U.S.C. § 154(d).
Section 154(d) states that “a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application . . . and ending on the date the patent is issued . . . makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application[.]” These provisional rights apply as long as the infringing party had actual notice of the published patent application and the invention that is claimed in the issued patent is substantially identical to the invention as claimed in the published patent application.
The Federal Circuit held that provisional rights are only given to a patent that issues before its expiration date. In its interpretation of Section 154(d), the Federal Circuit found the term “provisional” to suggest that the provisional rights are temporary rights that only exist for an interim period until another right takes their place. In Section 154, the only other rights are the exclusionary rights that are awarded when the patent issues and are only available until the patent expires. Therefore, for provisional rights to precede the exclusionary rights, the provisional rights must be granted only to a patent that issues before the patent expires.
Mr. Forest argued that the text of Section 154(d) is clear and must be given its full effect. Section 154(d) states that provisional rights “begin[] on the date of publication of the application . . . and end[] on the date the patent is issued.” However, the Federal Circuit found that this argument is too narrow a construction of meaning of Section 154(d). These are only isolated phrases taken from the statute, when the whole statute must be construed. When determining whether the statutory language is plain and clear, the words must be read in their context and in view of the overall statutory scheme. In this case, the Federal Circuit found that Section 154(d), when read in context, requires that provisional rights can only be granted with and precede exclusionary rights.
Federal Circuit Precedential 
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