# MPEP § 2720: Applications Filed Between June 8, 1995, and May 28, 2000

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2720

## Section

- **Citation:** MPEP § 2720
- **Heading:** Applications Filed Between June 8, 1995, and May 28, 2000
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2700 - Patent Terms, Adjustments, and Extensions / MPEP § 2720

## Text

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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## Nearby sections

- [MPEP § 2701 Patent Term](https://www.frixlaw.com/law-library/statutes/MPEP_S2701.md)
- [MPEP § 2710 Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154](https://www.frixlaw.com/law-library/statutes/MPEP_S2710.md)
- [MPEP § 2720 Applications Filed Between June 8, 1995, and May 28, 2000](https://www.frixlaw.com/law-library/statutes/MPEP_S2720.md)
- [MPEP § 2730 Applications Filed on or After May 29, 2000; Grounds for Adjustment](https://www.frixlaw.com/law-library/statutes/MPEP_S2730.md)
- [MPEP § 2731 Period of Adjustment](https://www.frixlaw.com/law-library/statutes/MPEP_S2731.md)
- [MPEP § 2732 Reduction of Period of Adjustment of Patent Term](https://www.frixlaw.com/law-library/statutes/MPEP_S2732.md)
- [MPEP § 2733 Patent Term Adjustment Determination](https://www.frixlaw.com/law-library/statutes/MPEP_S2733.md)
- [MPEP § 2734 Application for Patent Term Adjustment; Due Care Showing](https://www.frixlaw.com/law-library/statutes/MPEP_S2734.md)
- [MPEP § 2735 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2735.md)
- [MPEP § 2736 Third-Party Papers](https://www.frixlaw.com/law-library/statutes/MPEP_S2736.md)
- [MPEP § 2750 Patent Term Extension for Delays at other Agencies under 35 U.S.C. 156](https://www.frixlaw.com/law-library/statutes/MPEP_S2750.md)
- [MPEP § 2751 Eligibility Requirements](https://www.frixlaw.com/law-library/statutes/MPEP_S2751.md)
- [MPEP § 2752 Patent Term Extension Applicant](https://www.frixlaw.com/law-library/statutes/MPEP_S2752.md)
- [MPEP § 2753 Application Contents](https://www.frixlaw.com/law-library/statutes/MPEP_S2753.md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2720. Check the current official text before relying on it. Not legal advice.