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USPTO issues show-cause orders for pending applications that would issue without patent term
On April 3, 2025, the United States Court of Appeals for the Federal Circuit held that “provisional rights [under 35 U.S.C. 154(d)] are granted only when a patent would issue with exclusionary rights (i.e., would issue before its expiration date).” In re Forest, 134 F.4th 1198 (Fed. Cir. 2025). After the Forest decision, the Office began 1) identifying pending applications which, if issued, would result in a patent without any term (with no possibility of accruing Patent Term Adjustment which would result in patent term) and 2) mailing orders to show cause as to why prosecution of such pending applications should continue, even though any resulting patent would issue without exclusionary rights. In addition to saving our stakeholders unnecessary prosecution costs, this new procedure helps ensure examination resources are appropriately focused in support of reducing patent pendency.
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