USPTO Issues Show-Cause Orders for Patent Applications That Would Result in Zero-Term Patents Following Federal Circuit Ruling

On April 3, 2025, the United States Court of Appeals for the Federal Circuit issued a significant ruling in In re Forest, 134 F.4th 1198 (Fed. Cir. 2025), clarifying the scope of provisional rights under 35 U.S.C. § 154(d). The court held that provisional rights are granted only when a patent issues with exclusionary rights—that is, before its expiration date—meaning patents that would issue without any enforceable term do not confer such rights.

In direct response to this ruling, the United States Patent and Trademark Office (USPTO) has implemented a new procedural approach to manage pending patent applications. The Office is systematically identifying applications that, if allowed, would result in patents without any patent term. These are cases where there is no possibility of accruing Patent Term Adjustment (PTA) that would extend the patent term beyond zero.

For these identified applications, the USPTO is issuing show-cause orders to applicants. These orders require applicants to explain why prosecution should continue despite the fact that any resulting patent would issue without exclusionary rights. This process is designed to prevent unnecessary continuation of prosecution on applications that will not yield enforceable patent rights.

The USPTO’s initiative serves multiple purposes. Primarily, it aims to save patent applicants and other stakeholders from incurring unnecessary prosecution costs on applications that will not produce meaningful patent protection. Additionally, by curtailing prosecution on zero-term applications, the Office can better allocate its examination resources, thereby supporting broader efforts to reduce patent pendency and improve overall patent examination efficiency.

Applicants receiving these show-cause orders must respond appropriately to avoid abandonment of their applications. The USPTO encourages applicants to carefully consider the implications of the Forest decision and the Office’s new procedures when deciding how to proceed.

Stakeholders seeking to stay informed about such procedural updates and other USPTO news can subscribe to regular email updates via the USPTO subscription center at www.uspto.gov/subscribe.

For further assistance or inquiries, the USPTO directs users to its official contact page at www.uspto.gov/about/contacts. The Office also advises recipients to ensure their email filters allow messages from subscriptioncenter@subscriptions.uspto.gov to maintain uninterrupted receipt of communications.

This procedural change underscores the USPTO’s commitment to aligning patent prosecution practices with current legal standards and optimizing the patent examination process for the benefit of the patent community and the public.