United States Court of Appeals for the Federal Circuit ______________________

IN RE: DONALD K. FOREST, Appellant ______________________

2023-1178 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 15/391,116. ______________________

Decided: April 3, 2025 ______________________

DON FOREST, Bryn Mawr, PA, pro se.

PETER JOHN SAWERT, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Coke Morgan Stewart. Also represented by KAKOLI CAPRIHAN, AMY J. NELSON. ______________________

Before TARANTO, 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 Case: 23-1178 Document: 62 Page: 2 Filed: 04/03/2025

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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. Case: 23-1178 Document: 62 Page: 3 Filed: 04/03/2025

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 th