- In re Forest 23-1178.pdf [NEEDS_REVIEW]

• Whether 35 U.S.C. § 154(d) provisional rights can be granted for a patent that would issue after its § 154(a)(2) expiration date.: Section 154(d) provisional rights arise only as a temporary, pre-issuance adjunct to, and in addition to, the patent’s exclusionary rights, so they are unavailable when no exclusionary rights can be granted because the patent would issue after expiration.
• How to interpret § 154(d) in context with § 154(a) and the overall statutory scheme.: In interpreting § 154(d), the court reads the statute as a whole and gives effect to phrases like “in addition to other rights,” which ties provisional rights to the existence of the § 154(a) exclusionary rights and prevents reading provisional rights as an unbounded term-extending exception.
• Whether patent rights may extend beyond the statutorily authorized term absent clear congressional authorization.: Absent a clear statement from Congress, the patent statute should not be read to create rights extending beyond the limited term specified in § 154(a)(2), and § 154(d) does not supply such authorization.