USPTO show-cause orders for zero-term filings

What has the USPTO actually announced?

On 4 June 2026 the USPTO published a patent alert describing a procedure under which it mails orders to show cause asking why prosecution should continue in pending applications that, if issued, would result in a patent without any term.

The announcement is short, and its practical weight is easy to underestimate from a European desk. It is not a fee change or a form revision. It is the Office telling applicants, file by file, that it has looked at a pending application, concluded that a granted patent on it would carry no term, and would like to hear a reason for continuing. For portfolios that carry long chains of US continuations behind an early priority date, that letter is a foreseeable event rather than a surprise, and it is worth deciding now how the organisation will answer it.

What did In re Forest hold?

The Federal Circuit decided In re Forest, 134 F.4th 1198 (Fed. Cir. 2025), on 3 April 2025, holding that provisional rights under 35 U.S.C. 154(d) are granted only where a patent would issue with exclusionary rights.

That holding is the doctrinal hinge for everything the Office is now doing. Before it, an applicant prosecuting an application in a family whose term had already run could still point to the published-application provisional rights as something of value at the end of the road. In re Forest closes that argument off in the situation where the patent that would eventually issue carries no exclusionary rights at all. The practical consequence is that the application in question no longer has an obvious downstream entitlement attached to it, and the Office has drawn the natural inference: it is asking why examination should continue.

Which applications is the Office identifying?

After In re Forest, the USPTO began identifying pending applications which, if issued, would result in a patent without any term, and its identification covers applications with no possibility of accruing Patent Term Adjustment that would result in patent term.

Two features of that description matter when you translate it into a docket query. First, the Office is looking at the outcome — whether a patent issuing from the application would have term — rather than at any single procedural marker. Second, the PTA qualifier means the exercise is not defeated by the mere theoretical availability of an adjustment; the Office says it is identifying files where there is no possibility of accruing adjustment that would produce term. In portfolio terms, the candidates are the files where the arithmetic has already closed, not the files where it is merely tight.

For a European-headquartered portfolio, the shape of the exposure is usually familiar. It is the deep continuation and divisional chains hanging off an early US non-provisional filing, kept in prosecution across a decade or more of appeals, restriction practice, and successive continuations, where the tail of the family has drifted past the point at which a grant could still carry enforceable time. It is also, in some houses, the file that nobody has consciously reviewed since the responsible attorney left, and which has been renewed and responded to as a matter of routine.

Why is the Office doing this?

The USPTO has stated that the procedure is intended to save stakeholders unnecessary prosecution costs, and that it helps focus examination resources in support of reducing patent pendency.

Both stated rationales are worth taking at face value, because they tell you something about the register the correspondence will be written in. This is presented as housekeeping in the applicant’s own financial interest and in the interest of everyone waiting behind these files in the examiner’s queue. It is not framed as an enforcement measure or a sanction. That framing does not, however, make the order safe to ignore, and the reason is set out in the next section: the notice does not say what happens if you do.

What does the notice not settle?

The alert describes an internal Office practice rather than a rule change published in the Federal Register or codified in the CFR, and it does not state what a satisfactory response to a show-cause order looks like, what the response period is, or what happens to applications where the applicant does not reply.

Those are three substantial gaps, and they should govern how cautiously you plan. Because the practice is not codified, there is no published rule text to read against your file, and no notice-and-comment record to mine for the Office’s view of edge cases. Because the notice does not describe what satisfies an order, you cannot draft a template response with any confidence that it clears the bar. Because it gives no response period, you cannot assume the order carries the interval your docketing system would ordinarily apply to Office correspondence of a similar appearance. And because it says nothing about non-response, the consequence of letting the letter sit is unknown — which is precisely the reason to treat it as urgent rather than as low-priority.

The honest reading is that the announcement tells you the letters are coming and why, and leaves the procedural mechanics to be learned from the letters themselves. In-house counsel should plan for a document whose deadline and consequences must be read off its own face, not inferred from category.

Which files should you pull first?

The screening population is the pending US continuations and divisionals whose twenty-year term measured from the earliest non-provisional priority date in the family has already expired, or will expire before allowance can realistically be reached.

Run that query against the live US docket now, before any order arrives, and confirm the term arithmetic on each hit against the statute and the file’s own procedural history rather than against a spreadsheet field. The output is a candidate list, not a conclusion: the Office’s identification criteria and yours will not align perfectly, and a file that fails your screen may still never attract an order, while a file you thought safe may.

For each application on the list, record a decision before the post arrives. Some of these files are being kept alive for a reason that has nothing to do with exclusivity — continuity of a family for future filings, the integrity of a licensing or transactional record, an internal reporting requirement, or a litigation-adjacent reason known to a specific team. Those reasons may or may not be reasons the Office accepts, and the notice does not tell us; but they are reasons you must be able to articulate quickly, and they are much harder to reconstruct under a response period of unknown length than to write down in advance. Where no such reason exists, the candid answer is that the file is a cost line, and the Office’s stated rationale — saving unnecessary prosecution costs — is one you agree with.

What should you put in place now?

Three things: the screen, the pre-recorded rationale for each surviving file, and a docket rule that escalates a show-cause order instead of routing it as ordinary correspondence.

The docket rule is the part most likely to be neglected and the most likely to cause harm. An order to show cause arriving from the USPTO in a decade-old continuation will, on a busy docket, look like any other item of Office mail, and the default handling — assign to the outside firm, calendar the usual interval, respond in due course — is exactly the handling the unknown response period makes unsafe. Configure the docket so that this document type reaches a named person, with the file’s pre-recorded rationale attached, on receipt.

Then decide the commercial question once, at portfolio level, rather than file by file under time pressure: which of these applications does the business actually want to keep in prosecution, knowing that a patent issuing from them would carry no term, and knowing that In re Forest has removed the provisional-rights argument for keeping them there. For most portfolios that list will be short, and shortening it deliberately is better than shortening it in response to a letter.