Applications Filed Between June 8, 1995, and May 28, 2000

Former 35 U.S.C. 154

Contents and term of patent.

*****

(b) TERM EXTENSION.—

(1) INTERFERENCE DELAY OR SECRECY ORDERS.—If the issue of an

original patent is delayed due to a proceeding under section 135(a) of this

title, or because the application for patent is placed under an order

pursuant to section 181 of this title, the term of the patent shall be

extended for the period of delay, but in no case more than 5 years.

(2) EXTENSION FOR APPELLATE REVIEW. —If the issue of a patent

is delayed due to appellate review by the Board of Patent Appeals and

Interferences or by a Federal court and the patent is issued pursuant to a

decision in the review reversing an adverse determination of patentability,

the term of the patent shall be extended for a period of time but in no case

more than 5 years. A patent shall not be eligible for extension under this

paragraph if it is subject to a terminal disclaimer due to the issue of

another patent claiming subject matter that is not patentably distinct from

that under appellate review.

(3) LIMITATIONS.—The period of extension referred to in

paragraph (2)—

(A) shall include any period beginning on the date on

which an appeal is filed under section 134 or 141 of this title, or on

which an action is commenced under section 145 of this title, and

ending on the date of a final decision in favor of the applicant;

(B) shall be reduced by any time attributable to

appellate review before the expiration of 3 years from the filing date

of the application for patent; and

(C) shall be reduced for the period of time during which

the applicant for patent did not act with due diligence, as determined

by the Commissioner.

(4) LENGTH OF EXTENSION.—The total duration of all extensions

of a patent under this subsection shall not exceed 5 years.

*****

37 CFR 1.701  Extension of patent term due to examination delay under the Uruguay Round

Agreements Act (original applications, other than designs, filed on or after June 8,

1995, and before May 29, 2000).

did not act with due diligence, as determined

by the Commissioner.

(4) LENGTH OF EXTENSION.—The total duration of all extensions

of a patent under this subsection shall not exceed 5 years.

*****

37 CFR 1.701  Extension of patent term due to examination delay under the Uruguay Round

Agreements Act (original applications, other than designs, filed on or after June 8,

1995, and before May 29, 2000).

(a) A patent, other than for designs, issued on an application filed

on or after June 8, 1995, is entitled to extension of the patent term if the

issuance of the patent was delayed due to:

(1) Interference or derivation proceedings under

35

U.S.C. 135(a)

; and/or

(2) The application being placed under a secrecy order under

35

U.S.C. 181

; and/or

(3) Appellate review by the Patent Trial and Appeal Board or by

a Federal court under

35 U.S.C. 141

or

145

, if the patent was issued pursuant to a decision

in the review reversing an adverse determination of patentability and if the

patent is not subject to a terminal disclaimer due to the issuance of

another patent claiming subject matter that is not patentably distinct from

that under appellate review. If an application is remanded by a panel of the

Patent Trial and Appeal Board and the remand is the last action by a panel

of the Patent Trial and Appeal Board prior to the mailing of a notice of

allowance under

35 U.S.C. 151

in the

application, the remand shall be considered a decision in the review

reversing an adverse determination of patentability as that phrase is used

in

35

U.S.C. 154(b)(2)

as amended by section 532(a) of the

Uruguay Round Agreements Act, Public Law 103-465, 108 Stat. 4809, 4983-85

(1994), and a final decision in favor of the applicant under paragraph

of a notice of

allowance under

35 U.S.C. 151

in the

application, the remand shall be considered a decision in the review

reversing an adverse determination of patentability as that phrase is used

in

35

U.S.C. 154(b)(2)

as amended by section 532(a) of the

Uruguay Round Agreements Act, Public Law 103-465, 108 Stat. 4809, 4983-85

(1994), and a final decision in favor of the applicant under paragraph

(c)(3) of this section. A remand by a panel of the Patent Trial and Appeal

Board shall not be considered a decision in the review reversing an adverse

determination of patentability as provided in this paragraph if there is

filed a request for continued examination under

35 U.S.C.

132(b)

that was not first preceded by the mailing,

after such remand, of at least one of an action under

35 U.S.C.

132

or a notice of allowance under

35 U.S.C.

151.

(b) The term of a patent entitled to extension under paragraph (a) of

this section shall be extended for the sum of the periods of delay calculated

under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, to the extent

that these periods are not overlapping, up to a maximum of five years. The

extension will run from the expiration date of the patent.

(c)

(1) The period of delay under paragraph (a)(1) of this section

for an application is the sum of the following periods, to the extent that

the periods are not overlapping:

(i) With respect to each interference or derivation

proceeding in which the application was involved, the number of days,

if any, in the period beginning on the date the interference or

derivation proceeding was instituted to involve the application in the

interference or derivation proceeding and ending on the date that the

interference or derivation proceeding was terminated with respect to

the application; and

to each interference or derivation

proceeding in which the application was involved, the number of days,

if any, in the period beginning on the date the interference or

derivation proceeding was instituted to involve the application in the

interference or derivation proceeding and ending on the date that the

interference or derivation proceeding was terminated with respect to

the application; and

(ii) The number of days, if any, in the period beginning

on the date prosecution in the application was suspended by the Patent

and Trademark Office due to interference or derivation proceedings

under

35 U.S.C. 135(a)

not involving the application and ending on the date of the

termination of the suspension.

(2) The period of delay under paragraph (a)(2) of this section

for an application is the sum of the following periods, to the extent that

the periods are not overlapping:

(i) The number of days, if any, the application was

maintained in a sealed condition under

35 U.S.C.

181

;

(ii) The number of days, if any, in the period beginning

on the date of mailing of an examiner’s answer under

§

41.39

of this title in the application under

secrecy order and ending on the date the secrecy order and any renewal

thereof was removed;

(iii) The number of days, if any, in the period beginning

on the date applicant was notified that an interference or derivation

proceeding would be instituted but for the secrecy order and ending on

the date the secrecy order and any renewal thereof was removed;

and

(iv) The number of days, if any, in the period beginning

on the date of notification under

§ 5.3(c)

and

ending on the date of mailing of the notice of allowance under

§

1.311

.

riod beginning

on the date applicant was notified that an interference or derivation

proceeding would be instituted but for the secrecy order and ending on

the date the secrecy order and any renewal thereof was removed;

and

(iv) The number of days, if any, in the period beginning

on the date of notification under

§ 5.3(c)

and

ending on the date of mailing of the notice of allowance under

§

1.311

.

(3) The period of delay under paragraph (a)(3) of this section

is the sum of the number of days, if any, in the period beginning on the

date on which an appeal to the Patent Trial and Appeal Board was filed under

35

U.S.C. 134

and ending on the date of a final decision

in favor of the applicant by the Patent Trial and Appeal Board or by a

Federal court in an appeal under

35 U.S.C. 141

or a civil

action under

35 U.S.C. 145

.

(d) The period of delay set forth in paragraph (c)(3) shall be

reduced by:

(1) Any time during the period of appellate review that

occurred before three years from the filing date of the first national

application for patent presented for examination; and

(2) Any time during the period of appellate review, as

determined by the Director, during which the applicant for patent did not

act with due diligence. In determining the due diligence of an applicant,

the Director may examine the facts and circumstances of the applicant’s

actions during the period of appellate review to determine whether the

applicant exhibited that degree of timeliness as may reasonably be expected

from, and which is ordinarily exercised by, a person during a period of

appellate review.

or patent did not

act with due diligence. In determining the due diligence of an applicant,

the Director may examine the facts and circumstances of the applicant’s

actions during the period of appellate review to determine whether the

applicant exhibited that degree of timeliness as may reasonably be expected

from, and which is ordinarily exercised by, a person during a period of

appellate review.

(e) The provisions of this section apply only to original patents,

except for design patents, issued on applications filed on or after June 8, 1995,

and before May 29, 2000.

The twenty-year term of a patent issuing from an application filed on or

after June 8, 1995, and before May 29, 2000, may be extended for a maximum of five years

for delays in the issuance of the patent due to interferences, secrecy orders and/or

successful appeals to the Patent Trial and Appeal Board (Board) or the federal courts in

accordance with

37 CFR

1.701

. See

former 35 U.S.C. 154(b)

, as reproduced

above. Extensions for successful appeals are limited in that the patent must not be subject

to a terminal disclaimer. Further, the period of extension will be reduced by any time

attributable to appellate review within three years of the filing date of the first

national application for patent, and the period of extension for appellate review will be

reduced by any time during which the applicant did not act with due diligence. The patent

term extension that may be available under

35 U.S.C. 156

for premarket regulatory

review is separate from and will be added to any extension that may be available under

former and current

35

U.S.C. 154

. See

MPEP § 2750

et seq.

35 U.S.C.

154(b)

was amended, effective May 29, 2000, to provide for patent

term adjustment for applications filed on or after May 29, 2000, but the provisions of

former 35 U.S.C.

154(b)

, as reproduced above, continue to apply to applications filed

between and including June 8, 1995 and May 28, 2000.

35 U.S.C. 154

also was amended

effective September 16, 2012 and January 14, 2013

P § 2750

et seq.

35 U.S.C.

154(b)

was amended, effective May 29, 2000, to provide for patent

term adjustment for applications filed on or after May 29, 2000, but the provisions of

former 35 U.S.C.

154(b)

, as reproduced above, continue to apply to applications filed

between and including June 8, 1995 and May 28, 2000.

35 U.S.C. 154

also was amended

effective September 16, 2012 and January 14, 2013.

Examiners make no decisions regarding patent term extensions. Any patent

term extension granted as a result of administrative delay pursuant to

37 CFR 1.701

will be

printed on the face of the patent in generally the same location as the terminal disclaimer

information. The term of a patent will be readily discernible from the face of the patent

(i.e., from the filing date, continuing data, issue date and any patent term extensions

printed on the patent).

If applicant disagrees with the patent term extension information printed

on the front page of the patent, applicant may request review by way of a petition under

37 CFR

1.181

. If the petition is granted, a Certificate of Correction

pursuant to

37 CFR

1.322

will be issued.

Effective May 24, 2004,

37 CFR 1.701(a)(3)

was amended to

indicate that certain remands by the Board shall be considered “a decision in the review

reversing an adverse determination of patentability” for patent term extension purposes.

Petitions and Certificates of Correction regarding patent term extension

under

former 35 U.S.C.

154(b)

should be addressed to Mail Stop Patent Ext., Commissioner for

Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

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