Period of Adjustment

[Editor Note:

37 CFR

1.703(a)(1)

, as reproduced below, includes amendments applicable

only to patents granted on or after January 14, 2013 and

37 CFR 1.703(b)(4) and

(e)

, as reproduced below, include amendments applicable only to

applications and patents in which a notice of allowance issued on or after September 17,

2012. See

37 CFR 1.703 (2012-09-17 thru 2013-03-31)

or

37 CFR 1.703

(pre-2012-09-17)

for paragraph (a)(1) applicable to patents

granted before January 14, 2013. See

37 CFR 1.703 (pre-2012-09-17)

for

paragraphs (b)(4) and (e) that apply if the notice of allowance was issued before

September 17, 2012.]

37 CFR 1.703  Period of adjustment of patent term due to examination delay.

(a) The period of adjustment under

§ 1.702(a)

is the sum of the following periods:

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

day after the date that is fourteen months after the date on which the

application was filed under

35 U.S.C. 111(a)

or the

date the national stage commenced under

35 U.S.C. 371(b)

or

(f)

in an international application and ending on the

date of mailing of either an action under

35 U.S.C.

132

, or a notice of allowance under

35 U.S.C.

151

, whichever occurs first;

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

day after the date that is four months after the date a reply under

§

1.111

was filed and ending on the date of mailing of

either an action under

35 U.S.C. 132

, or a

notice of allowance under

35 U.S.C. 151

, whichever

occurs first;

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

day after the date that is four months after the date a reply in compliance

with

§

1.113(c)

was filed and ending on the date of mailing

of either an action under

35 U.S.C. 132

, or a

notice of allowance under

35 U.S.C. 151

, whichever

occurs first;

r

35 U.S.C. 132

, or a

notice of allowance under

35 U.S.C. 151

, whichever

occurs first;

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

day after the date that is four months after the date a reply in compliance

with

§

1.113(c)

was filed and ending on the date of mailing

of either an action under

35 U.S.C. 132

, or a

notice of allowance under

35 U.S.C. 151

, whichever

occurs first;

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

day after the date that is four months after the date an appeal brief in

compliance with

§ 41.37

was filed and

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

§

41.39

, an action under

35 U.S.C.

132

, or a notice of allowance under

35 U.S.C.

151

, whichever occurs first;

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

day after the date that is four months after the date of a final decision 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

or

146

where at least one

allowable claim remains in the application and ending on the date of mailing

of either an action under

35 U.S.C. 132

or a

notice of allowance under

35 U.S.C. 151

, whichever

occurs first; and

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

day after the date that is four months after the date the issue fee was paid

and all outstanding requirements were satisfied and ending on the date a

patent was issued.

in the application and ending on the date of mailing

of either an action under

35 U.S.C. 132

or a

notice of allowance under

35 U.S.C. 151

, whichever

occurs first; and

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

day after the date that is four months after the date the issue fee was paid

and all outstanding requirements were satisfied and ending on the date a

patent was issued.

(b) The period of adjustment under

§ 1.702(b)

is the number of days, if any, in the period beginning on the day after the date

that is three years after the date on which the application was filed under

35 U.S.C.

111(a)

or the national stage commenced under

35 U.S.C.

371(b) or (f)

in an international application and ending on

the date a patent was issued, but not including the sum of the following

periods:

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

date on which any request for continued examination of the application under

35

U.S.C. 132(b)

was filed and ending on the date of

mailing of the notice of allowance under

35 U.S.C. 151

;

(2)

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

on the date an interference or derivation proceeding was instituted to

involve the application in the interference or derivation proceeding

under

35 U.S.C. 135(a)

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 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;

(3)

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 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;

(3)

(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

in the application under secrecy order and

ending on the date the secrecy order 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 under

35 U.S.C. 135(a)

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

the secrecy order was removed; and

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

on the date of notification under

§ 5.3(c)

of this

chapter and ending on the date of mailing of the notice of allowance

under

35 U.S.C. 151

;

and,

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

date on which jurisdiction over the application passes to the Patent Trial

and Appeal Board under

§ 41.35(a)

of this

chapter and ending on the date that jurisdiction by the Patent Trial and

Appeal Board ends under

§ 41.35(b)

of this

chapter or the date of the last decision by a Federal court in an appeal

under

35 U.S.C. 141

or civil action under

35 U.S.C.

145

, whichever is later.

beginning on the

date on which jurisdiction over the application passes to the Patent Trial

and Appeal Board under

§ 41.35(a)

of this

chapter and ending on the date that jurisdiction by the Patent Trial and

Appeal Board ends under

§ 41.35(b)

of this

chapter or the date of the last decision by a Federal court in an appeal

under

35 U.S.C. 141

or civil action under

35 U.S.C.

145

, whichever is later.

(c) The period of adjustment under

§ 1.702(c)

is the sum of the following periods, to the extent that the periods are not

overlapping:

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

date an interference or proceeding was instituted to involve the application

in the interference or derivation proceeding under

35 U.S.C.

135(a)

and ending on the date that the interference or

derivation proceeding was terminated with respect to the application; and

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

date prosecution in the application was suspended by the 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.

(d) The period of adjustment under

§ 1.702(d

)

is the sum of the following periods, to the extent that the periods are not

overlapping:

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

in a sealed condition under

35 U.S.C. 181

;

(2) 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 was removed;

(3) 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 was removed; and

ate 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 was removed;

(3) 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 was removed; and

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

date of notification under

§ 5.3(c)

of this chapter

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

35

U.S.C. 151

.

(e) The period of adjustment under

§

1.702(e)

is the sum of the number of days, if any, in the

period beginning on the date on which jurisdiction over the application passes to

the Patent Trial and Appeal Board under

§ 41.35(a)

of this chapter and

ending on the date of a final decision in favor of applicant by the Patent Trial

and Appeal Board or a Federal court in an appeal under

35 U.S.C.

141

or a civil action under

35 U.S.C.

145

.

(f) The adjustment will run from the expiration date of the patent as

set forth in

35

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

. To the extent that periods of delay

attributable to the grounds specified in

§ 1.702

overlap, the period of

adjustment granted under this section shall not exceed the actual number of days

the issuance of the patent was delayed. The term of a patent entitled to

adjustment under

§ 1.702

and this section shall be adjusted for the sum of

the periods calculated under paragraphs (a) through (e) of this section, to the

extent that such periods are not overlapping, less the sum of the periods

calculated under

§ 1.704

. The date indicated on any certificate of mailing

or transmission under

§ 1.8

shall not be taken into

account in this calculation.

nt entitled to

adjustment under

§ 1.702

and this section shall be adjusted for the sum of

the periods calculated under paragraphs (a) through (e) of this section, to the

extent that such periods are not overlapping, less the sum of the periods

calculated under

§ 1.704

. The date indicated on any certificate of mailing

or transmission under

§ 1.8

shall not be taken into

account in this calculation.

(g) No patent, the term of which has been disclaimed beyond a

specified date, shall be adjusted under

§ 1.702

and this section

beyond the expiration date specified in the disclaimer.

37 CFR

1.703

specifies the period of adjustment if a patent is entitled to

patent term adjustment under

35 U.S.C. 154(b)(1)

and

37 CFR

1.702

. When a period is indicated (in

37 CFR 1.703

or

1.704

) as “beginning” on a particular day, that day is included in

the period, in that such day is “day one” of the period and not “day zero.” For example, a

period beginning on April 1 and ending on April 10 is ten (and not nine) days in

length.

35 U.S.C. 154(b)(1)(A)

and (B)

provide for an adjustment of one day for each day after the

end of the period set forth in

35 U.S.C. 154(b)(1)(A)(i), (ii), (iii), (iv), and

(B)

until the prescribed action is taken, whereas

35 U.S.C.

154(b)(1)(C)

provides for an adjustment of one day for each day of

the pendency of the proceeding, order, or review prescribed in

35 U.S.C. 154(b)(1)(C)(i) through

(iii)

. Therefore, the end of the period set forth in

37 CFR

1.703(a)

and

1.703(b)

(which correspond to

35 U.S.C. 154(b)(1)(A)

and (B)

) is “day zero” (not “day one”) as to the period of

adjustment, whereas the first day of the proceeding, order, or review set forth in

37 CFR

1.703(c)

,

1.703(d)

, and

1.703(e)

(which

correspond to

35 U.S.C.

154(b)(1)(C)(i) through (iii)

) is “day one” of the period of

adjustment.

I.

PERIODS OF ADJUSTMENT

37 CFR

1.703(a)

pertains to

35 U.S.C

3(b)

(which correspond to

35 U.S.C. 154(b)(1)(A)

and (B)

) is “day zero” (not “day one”) as to the period of

adjustment, whereas the first day of the proceeding, order, or review set forth in

37 CFR

1.703(c)

,

1.703(d)

, and

1.703(e)

(which

correspond to

35 U.S.C.

154(b)(1)(C)(i) through (iii)

) is “day one” of the period of

adjustment.

I.

PERIODS OF ADJUSTMENT

37 CFR

1.703(a)

pertains to

35 U.S.C. 154(b)(1)(A)

and indicates

that the period of adjustment under

37 CFR 1.702(a)

is the sum of the

periods specified in

37 CFR 1.703(a)(1)

through

37 CFR 1.703(a)(6)

.

A.

37 CFR 1.703(a)(1) – Longer

Than Fourteen Months to Receive First Action

37 CFR

1.703(a)(1)

pertains to the provisions of

35 U.S.C.

154(b)(1)(A)(i)

and specifies that the period is the number of

days, if any, beginning on the date after the day that is fourteen months after the

date on which the application was filed under

35 U.S.C. 111(a)

or fulfilled the

requirements of

35

U.S.C. 371

in an international application and ending on the

mailing date of either an action under

35 U.S.C. 132

, or a notice of

allowance under

35

U.S.C. 151

, whichever occurs first. For purposes of

35 U.S.C.

154(b)(1)(A)(i)(II)

in effect prior to enactment of the AIA

Technical Corrections Act, an international application fulfills the requirements of

35 U.S.C.

371

on the date of commencement of the national stage under

35 U.S.C. 371(b)

or (f)

, or the date the application fulfills the requirements

of

35 U.S.C.

371(c)

if that date is later than the date of commencement of

the national stage under

35 U.S.C. 371(b) or (f)

. In other

words, the requirements of

35 U.S.C. 371

are met when

applicant has met all of the requirements of

35 U.S.C. 371(c)

and, unless

applicant requests early processing under

35 U.S.C. 371(f)

, the time limit

set forth in the applicable one of

PCT Articles 22

and

39

has expired. Accordingly, the requirements of

35 U.S.C.

371

are met when the Office can begin examination of the patent

application

other

words, the requirements of

35 U.S.C. 371

are met when

applicant has met all of the requirements of

35 U.S.C. 371(c)

and, unless

applicant requests early processing under

35 U.S.C. 371(f)

, the time limit

set forth in the applicable one of

PCT Articles 22

and

39

has expired. Accordingly, the requirements of

35 U.S.C.

371

are met when the Office can begin examination of the patent

application. If, for example, an applicant files the required oath or declaration

(

35 U.S.C.

115

) and any necessary English translation

after

the expiration of the time limit set forth in

Article

22

of the PCT or the time limit under

Article 39

of

the PCT, the date the requirements of

35 U.S.C. 371

are met is the date

the requirements of

35 U.S.C. 371(c)

are met. If, however, an applicant files the

required declaration (or oath), filing fee, and any required English translation

before

the expiration of the relevant

PCT Article 22

or

Article

39

time period, but does not request early processing under

35 U.S.C.

371

, the requirements of

35 U.S.C. 371

will be met once

the applicable time period has expired. If the expiration of the thirty-month period

falls on a weekend or a federal holiday, the application will commence on the next

business day pursuant to

PCT Rule 80.5

. See

Actelion Pharm. v. Matal,

881 F.3d 1339, 125 USPQ2d 1585, 1591

(Fed. Cir. 2018). An applicant can commence the national stage in an international

application earlier than thirty months by making an express request under

35 U.S.C.

371(f)

. The request under

35 U.S.C. 371(f)

must be

expressly and clearly stated. The request can made by checking the appropriate box on

form PTO-1390 (TRANSMITTAL LETTER TO THE UNITED STATES DESIGNATED/ELECTED OFFICE

(DO/EO/US) CONCERNING A SUBMISSION UNDER 35 U.S.C. 371). Use of form PTO-1390 is

optional. However, if an applicant uses the form and fails to check the appropriate

box to request early processing, the early processing request may not be recognized

unless the request under

35 U.S.C

e by checking the appropriate box on

form PTO-1390 (TRANSMITTAL LETTER TO THE UNITED STATES DESIGNATED/ELECTED OFFICE

(DO/EO/US) CONCERNING A SUBMISSION UNDER 35 U.S.C. 371). Use of form PTO-1390 is

optional. However, if an applicant uses the form and fails to check the appropriate

box to request early processing, the early processing request may not be recognized

unless the request under

35 U.S.C. 371(f)

is clearly and

explicitly stated in the national stage papers. A general statement that the

applicant “earnestly solicits early examination and allowance of these claims” in a

remarks section is not sufficient, by itself, to request early processing under

35 U.S.C.

371(f)

. See

Actelion Pharm. v. Matal,

881

F.3d 1339, 125 USPQ2d 1585, 1590 (Fed. Cir. 2018).

For patents issuing from international application

that are granted on or after January 14, 2013,

37 CFR

1.703(a)(1)

in effect on April 1, 2013 applies. The AIA

Technical Corrections Act and the changes to

37 CFR

1.703(a)(1)

revised the date that begins the fourteen-month

measurement from the date on which the international application fulfilled the

requirements of

35

U.S.C. 371

to the date of commencement of the national stage

under

35 U.S.C.

371

. The change to

35 U.S.C. 154(b)(1)(A)(i)(II)

means that the time period will begin sooner in international applications where the

inventor does not file the inventor’s oath or declaration (

35 U.S.C.

371(c)(4)

) or other requirements at the time of the

commencement.

A written restriction requirement, a written election of species

requirement, a requirement for information under

37 CFR 1.105

, an action under

Ex parte Quayle,

25 USPQ 74, 1935 C.D. 11, 453 O.G. 213 (Comm’r

Pat. 1935), and a notice of allowability (PTOL-37) are each an action issued as a

result of the examination conducted pursuant to

35 U.S.C. 131

. As such, each of

these Office actions is a notification under

35 U.S.C. 132

.

In particular, courts have found that written

restriction requirements are notifications under

35 U.S.C. 132

er

Ex parte Quayle,

25 USPQ 74, 1935 C.D. 11, 453 O.G. 213 (Comm’r

Pat. 1935), and a notice of allowability (PTOL-37) are each an action issued as a

result of the examination conducted pursuant to

35 U.S.C. 131

. As such, each of

these Office actions is a notification under

35 U.S.C. 132

.

In particular, courts have found that written

restriction requirements are notifications under

35 U.S.C. 132

. See

Pfizer Inc. v. Lee,

811 F.3d 466, 117 USPQ 1781, 1786 (Fed.

Cir. 2016) (The court found an initial written restriction requirement, which was

withdrawn and reissued by the examiner, satisfied the notice requirement of

35 U.S.C.

132

because “the initial restriction requirement placed the

applicants on notice of ‘the broad statutory basis for [the rejection of their]

claims’” (quoting

Chester v. Miller,

906 F.2d 1574, 1578, 15

USPQ2d 1333 (Fed. Cir. 1990)). See also

Idorsia Pharm., Ltd. v.

Iancu,

811 Fed. App’x 650, 2020 USPQ2d 10498 (Fed. Cir. 2020) (holding

that a written restriction requirement satisfied the statutory notice requirement of

35 U.S.C.

132

for purposes of the 14-month deadline under

35 U.S.C.

154(b)(1)(A)(i)

, even when superseded and replaced by a

subsequent corrected restriction requirement, because it was sufficiently informative

to allow the patent applicant to counter the grounds for rejection). In considering

whether a restriction requirement under

35 U.S.C. 121

was appealable

under

35

U.S.C. 134

, the Court of Customs and Patent Appeals (CCPA)

noted that: (1)

35 U.S.C. 121

denoted its restriction procedure as a

‘‘requirement’’; (2)

35 U.S.C. 132

stated that the

Commissioner shall give notice to the applicant whenever ‘‘any claim for a patent is

rejected, or any objection or requirement made’’; and (3)

35 U.S.C.

134

provided for an appeal only by an applicant whose claims

have been ‘‘twice rejected.’’ See

In re Hengehold,

440 F.2d 1395,

1402–03, 169 USPQ 473,479 (CCPA 1971). Thus, the CCPA concluded that Congress

intended to differentiate between objections and requirements (

35 U.S.C

to the applicant whenever ‘‘any claim for a patent is

rejected, or any objection or requirement made’’; and (3)

35 U.S.C.

134

provided for an appeal only by an applicant whose claims

have been ‘‘twice rejected.’’ See

In re Hengehold,

440 F.2d 1395,

1402–03, 169 USPQ 473,479 (CCPA 1971). Thus, the CCPA concluded that Congress

intended to differentiate between objections and requirements (

35 U.S.C. 132

)

and actual rejections of claims (

35 U.S.C. 132

) and made appeal

applicable only to the latter. See

Hengehold,

440 F.2d at 1403,

169 USPQ at 479. Since the CCPA cited with approval the "requirement" language of

35 U.S.C.

121

and evaluated rejections, objections, and requirements

together under

35

U.S.C. 132

when discussing and differentiating among them to

determine whether a restriction requirement was appealable under

35 U.S.C.

134

, the CCPA must have considered a restriction requirement to

be a requirement under

35 U.S.C. 132

. In other words,

the CCPA’s analysis determined that the making of a written restriction (or election)

requirement is a notification under

35 U.S.C. 132

. See also

Digital Equipment Corp. v. Diamond,

653 F.2d 701, 713 n.13, 210

USPQ 521, 535–36 n.13 (1st Cir. 1981) (

35 U.S.C. 132

when noting that

the terms ‘‘requirement’’ and ‘‘objection’’ are distinct from ‘‘rejection’’ and as

such, objections were not appealable under

35 U.S.C. 134

). In addition, the

Office has long considered a written restriction requirement containing no action on

the merits to be a notice under

35 U.S.C. 132

. For example,

MPEP §

710.02(b)

instructs examiners to set a shortened statutory

period for reply of two months for a written restriction requirement containing no

action on the merits under the authority given by

35 U.S.C.

133

.

35 U.S.C. 133

would not apply to

the period for reply to a written restriction requirement, if a written restriction

requirement containing no action on the merits is not a notice under

35 U.S.C.

132

)

instructs examiners to set a shortened statutory

period for reply of two months for a written restriction requirement containing no

action on the merits under the authority given by

35 U.S.C.

133

.

35 U.S.C. 133

would not apply to

the period for reply to a written restriction requirement, if a written restriction

requirement containing no action on the merits is not a notice under

35 U.S.C.

132

.

Office notices and letters issued as part of the

pre-examination processing of an application are not notices issued as a result of an

examination conducted pursuant to

35 U.S.C. 131

, and thus are not

notifications under

35 U.S.C. 132

. Examples of such pre-examination processing

notices are: a Notice of Incomplete Nonprovisional Application, a Notice of Omitted

Item(s) in a Nonprovisional Application, a Notice to File Missing Parts of

Application, an Information Notice to Applicant, a Notice to File Corrected

Application Papers Filing Date Granted, or a Notice to Comply with Requirements for

Patent Applications Containing Nucleotide and/or Amino Acid Sequence Disclosures.

B.

37 CFR 1.703(a)(2) – Longer

Than Four Months to Receive Action After a Reply under 35 U.S.C.

111

37 CFR

1.703(a)(2)

pertains to the provisions of

35 U.S.C.

154(b)(1)(A)(ii)

and specifies that the period is the number of

days, if any, beginning on the day after the date that is four months after the date

a reply under

37

CFR 1.111

was filed and ending on the mailing date of either an

action under

35

U.S.C. 132

, or a notice of allowance under

35 U.S.C. 151

,

whichever occurs first.

C.

37 CFR 1.703(a)(3) – Longer

Than Four Months to Receive Action After a Reply in Compliance 35 U.S.C.

113(c)

37 CFR

1.703(a)(3)

also pertains to the provisions of

35 U.S.C.

154(b)(1)(A)(ii)

and specifies that the period is the number of

days, if any, beginning on the day after the date that is four months after the date

a reply in compliance with

37 CFR 1.113(c)

was filed and

ending on the date of mailing of either an action under

35 U.S.C

hs to Receive Action After a Reply in Compliance 35 U.S.C.

113(c)

37 CFR

1.703(a)(3)

also pertains to the provisions of

35 U.S.C.

154(b)(1)(A)(ii)

and specifies that the period is the number of

days, if any, beginning on the day after the date that is four months after the date

a reply in compliance with

37 CFR 1.113(c)

was filed and

ending on the date of mailing of either an action under

35 U.S.C. 132

,

or a notice of allowance under

35 U.S.C. 151

, whichever occurs

first. A reply under

37 CFR 1.113

is a reply to a

final Office action, and a reply in compliance with

37 CFR 1.113

is

a reply that cancels all of the rejected claims and removes all outstanding

objections and requirements or otherwise places the application in condition for

allowance. Any amendment after final that does not cancel all of the rejected claims

and remove all outstanding objections and requirements or otherwise place the

application in condition for allowance is not a reply in compliance with

37 CFR

1.113(c)

and will not trigger the four-month requirement under

37

CFR 1.703(a)(3)

for the Office to act on the after-final

reply.

D.

37 CFR 1.703(a)(4) – Longer

Than Four Months to Receive Action After an Appeal Brief in Compliance with 37

CFR 41.37

37 CFR

1.703(a)(4)

also pertains to the provisions of

35 U.S.C.

154(b)(1)(A)(ii)

and specifies that the period is the number of

days, if any, beginning on the day after the date that is four months after the date

an appeal brief in compliance with

37 CFR 41.37

was filed and ending

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

37 CFR 41.39

,

an action under

35

U.S.C. 132

, or a notice of allowance under

35 U.S.C. 151

,

whichever occurs first. As discussed below, the phrase “the date on which” an “appeal

was taken” in

35

U.S.C. 154(b)(1)(A)(ii)

means the date on which an appeal brief

(and not a notice of appeal) was filed

ance with

37 CFR 41.37

was filed and ending

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

37 CFR 41.39

,

an action under

35

U.S.C. 132

, or a notice of allowance under

35 U.S.C. 151

,

whichever occurs first. As discussed below, the phrase “the date on which” an “appeal

was taken” in

35

U.S.C. 154(b)(1)(A)(ii)

means the date on which an appeal brief

(and not a notice of appeal) was filed. The phrase “appeal brief in compliance with

37 CFR

41.37

” requires that: (1) the appeal brief fee

(

37

CFR 1.17(b)

) be paid (

37 CFR 41.20

); and (2) the appeal

brief complies with the requirements in

37 CFR 41.37(c)

. However, for

applications in which the appeal brief was filed on or after March 19, 2013, the fee

required to accompany the appeal brief is set to zero dollars in amended

37 CFR

41.37(a)

, and accordingly, the phrase “appeal brief in

compliance with

37

CFR 41.37

” no longer requires the filing of the appeal brief

fee. See

Setting and Adjusting Patent Fees,

78 FR 4212, 4291

(January 18, 2013).

E.

37 CFR 1.703(a)(5) – Longer

Than Four Months to Receive Action After a Final Decision by the Board or a

Federal Court

37 CFR

1.703(a)(5)

pertains to the provisions of

35 U.S.C.

154(b)(1)(A)(iii)

and specifies that the period is the number

of days, if any, beginning on the day after the date that is four months after the

date of a final decision by the Patent Trial and Appeal Board (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

or

146

, where at least one allowable

claim remains in the application and ending on the mailing date of either an action

under

35 U.S.C.

132

, or a notice of allowance under

35 U.S.C. 151

,

whichever occurs first.

The phrase “allowable claims remain in the application” for

purposes of

35

U.S.C. 154(b)(1)(A)(iii)

means that after the decision there is

at least one pending claim (for purposes of statutory construction, “words importing

the plural include the singular” (1 U.S.C

g on the mailing date of either an action

under

35 U.S.C.

132

, or a notice of allowance under

35 U.S.C. 151

,

whichever occurs first.

The phrase “allowable claims remain in the application” for

purposes of

35

U.S.C. 154(b)(1)(A)(iii)

means that after the decision there is

at least one pending claim (for purposes of statutory construction, “words importing

the plural include the singular” (1 U.S.C. 1)) that is not withdrawn from

consideration and is not subject to a rejection, objection, or other requirement.

This applies in the following situations: (1) at least one claim is allowable (not

merely objected to) at the time the examiner’s answer is mailed and is not canceled

before, or made subject to a rejection as a result of, the appellate review; or (2)

when all of the rejections applied to at least one claim are reversed, and such claim

is not made subject to a rejection, as a result of the appellate review. For example:

(A) If claims 1 and 2 (both independent) are pending, the decision

affirms the rejection of claim 1, and claim 2 was indicated as allowable prior

to the appeal, then “allowable claims remain in the application” for purposes

of

35 U.S.C.

154(b)(1)(A)(iii)

.

(B) If claims 1 and 2 are pending, the decision affirms the

rejection of claim 1, and claim 2 was objected to by the examiner prior to the

appeal as being allowable except for its dependency from claim 1, “allowable

claims” do not “remain in the application” for purposes of

35 U.S.C.

154(b)(1)(A)(iii)

(claim 2 is not allowable because there

is an outstanding objection to it).

(C) If claims 1 and 2 are pending (claim 2 either depending from

claim 1 or is an independent claim), and the decision affirms the rejection of

claim 1 and reverses the rejection of claim 2, then “allowable claims remain in

the application” for purposes of

35 U.S.C. 154(b)(1)(A)(iii)

(claim 2 is “allowable” within the meaning of

37 CFR

1.703(a)(5)

) because there is no outstanding objection or

requirement as to it (see

MPEP § 1214.06

, subsection

II)

nding from

claim 1 or is an independent claim), and the decision affirms the rejection of

claim 1 and reverses the rejection of claim 2, then “allowable claims remain in

the application” for purposes of

35 U.S.C. 154(b)(1)(A)(iii)

(claim 2 is “allowable” within the meaning of

37 CFR

1.703(a)(5)

) because there is no outstanding objection or

requirement as to it (see

MPEP § 1214.06

, subsection

II).

For a Board decision to be a ‘‘decision by the Patent

Trial and Appeal Board under

[35 U.S.C.] 134

’’ within the

meaning of

35

U.S.C. 154(b)(1)(A)(iii)

(and

37 CFR

1.703(a)(5)

), the decision must sustain or reverse the

rejection(s) of the claim(s) on appeal, or in limited circumstances as further

described below, a remand may be deemed a decision for purposes of

37 CFR

1.703(a)(5)

. For a Board decision to be a ‘‘decision by the

Patent Trial and Appeal Board under

[35 U.S.C.] 135

’’within the

meaning of

35

U.S.C. 154(b)(1)(A)(iii)

(and

37 CFR

1.703(a)(5)

), the decision must include a decision on the

patentability of the claims, derivation, or priority of invention.

If an application is remanded by a panel and the

remand is the last action by a panel of the Board prior to the mailing of a notice of

allowance under

35

U.S.C. 151

, the remand generally shall be considered a decision

by the Patent Trial and Appeal Board as that phrase is used in

35 U.S.C.

154(b)(1)(A)(iii)

, a decision in the review reversing an

adverse determination of patentability as that phrase is used in

35 U.S.C.

154(b)(1)(C)(iii)

, and a final decision in favor of the

applicant as that phrase is used in

37 CFR 1.703(e)

. However, a

remand by a panel of the 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 the

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

a

remand by a panel of the 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 the

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

.

The phrase ‘‘final decision’’ in

37 CFR

1.703(a)(5)

means that: (1) the decision is the last decision

in the review by the Board (or by a federal court); and (2) the decision does not

require further action by the applicant to avoid termination of proceedings as to the

rejected claims. Thus, a Board decision containing a new ground of rejection under

37 CFR

41.50(b)

requires action by the applicant to avoid termination

of proceedings as to the rejected claims and is, thus, is not considered a ‘‘final

decision’’ for purposes of

37 CFR 1.703(a)(5)

. The phrase

‘‘final decision,’’ however, does not require that the decision be final for purposes

of judicial review (

e.g.,

a Board decision reversing the rejection

of all of the claims on appeal is not ‘‘final’’ for purposes of judicial review, but

(absent a subsequent decision by the Board) is a ‘‘final decision’’ for purposes of

37

CFR 1.703(a)(5)

).

F.

37 CFR 1.703(a)(6) – Longer Than

Four Months to Issue Patent After Payment of the Issue

Fee

37 CFR

1.703(a)(6)

pertains to the provisions of

35 U.S.C.

154(b)(1)(A)(iv)

and specifies that the period is the number of

days, if any, beginning on the day after the date that is four months after the date

the issue fee was paid and all outstanding requirements were satisfied and ending on

the date the patent was issued. Thus, the period of adjustment under

35 U.S.C

fter Payment of the Issue

Fee

37 CFR

1.703(a)(6)

pertains to the provisions of

35 U.S.C.

154(b)(1)(A)(iv)

and specifies that the period is the number of

days, if any, beginning on the day after the date that is four months after the date

the issue fee was paid and all outstanding requirements were satisfied and ending on

the date the patent was issued. Thus, the period of adjustment under

35 U.S.C.

154(b)(1)(A)(iv)

, if any, is ascertained by looking back from

the issue date to the most recent time at which the issue fee or another requirement

was outstanding, determining the succeeding date on which the issue fee was paid and

all outstanding requirements were satisfied, and measuring the number of days, if

any, in the period beginning on the day after the date that is four months after such

date the issue fee was paid and all outstanding requirements were satisfied and

ending on the date a patent was issued. The date the issue fee was paid and all

outstanding requirements were satisfied is the later of the date the issue fee was

paid or the date all outstanding requirements were satisfied. Note that the filing of

a priority document (and processing fee) is not considered an outstanding requirement

under

35 U.S.C.

154(b)(1)(A)(iv)

and

37 CFR 1.703(a)(6)

because, if

the priority document is not filed, the patent simply issues without the priority

claim (the application is not abandoned). If prosecution in an application is

reopened after allowance (see

MPEP § 1308

), all outstanding

requirements are not satisfied until the application is again in condition for

allowance as indicated by the issuance of a new notice of allowance under

35 U.S.C.

151

(see

MPEP § 1308

) and the form PTOL-85(b)

from the latest notice of allowance is returned to the Office along with any

outstanding requirements, such as payment of any additional fees owed and/or

additional required drawings to be submitted by the applicant

sfied until the application is again in condition for

allowance as indicated by the issuance of a new notice of allowance under

35 U.S.C.

151

(see

MPEP § 1308

) and the form PTOL-85(b)

from the latest notice of allowance is returned to the Office along with any

outstanding requirements, such as payment of any additional fees owed and/or

additional required drawings to be submitted by the applicant. For example, if

prosecution in an application is reopened after a notice of allowance as the result

of an applicant filing a request for continued examination, the date on which the

issue fee was paid and all outstanding requirements were satisfied is the date on

which the Issue Fee Transmittal Form (PTOL-85(b)) from the ultimate notice of

allowance under

35

U.S.C. 151

is returned to the Office (or a later date if there

remain additional outstanding requirements, such as payment of any additional fees

owed or required drawings to be submitted). See

MPEP § 2732

.

Applicant is also provided patent term adjustment for

Office delay under

37 CFR 1.702(a)(2)

when the

Office fails to act on a request for continued examination within four months of the

filing of the request for continued examination. The period of adjustment for Office

delay, if any, begins on the date that is the day after the date that is four months

from the filing of the request for continued examination and ends on the date of

mailing of the date of an action under

35 U.S.C. 132

or a notice of

allowance under

35

U.S.C. 151

.

II.

THREE-YEAR PENDENCY

ADJUSTMENT

37 CFR

1.703(b)

pertains to the provisions of

35 U.S.C.

154(b)(1)(B)

and indicates that the period of adjustment under

37 CFR

1.702(b)

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

the day after the date that is three years after the actual filing date of the

application and ending on the date a patent was issued.

37 CFR 1.703(b)

also sets forth the limitations on patent term adjustment specified in

35 U.S.C. 154(b)(1)(B)(i) and

f

35 U.S.C.

154(b)(1)(B)

and indicates that the period of adjustment under

37 CFR

1.702(b)

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

the day after the date that is three years after the actual filing date of the

application and ending on the date a patent was issued.

37 CFR 1.703(b)

also sets forth the limitations on patent term adjustment specified in

35 U.S.C. 154(b)(1)(B)(i) and

(ii)

. Specifically,

37 CFR 1.703(b)

provides that the

period of adjustment of the term of a patent shall not include the period equal to the

sum of the following periods: (1) the period of pendency consumed by continued

examination of the application under

35 U.S.C. 132(b)

(

35

U.S.C. 154(b)(1)(B)(i)

); (2) the period of pendency consumed by

interference or derivation proceedings (

35 U.S.C. 154(b)(1)(B)(ii)

); (3) the

period of pendency consumed by imposition of a secrecy order (

35 U.S.C.

154(b)(1)(B)(ii)

); and (4) the period of pendency consumed by

appellate review under

35 U.S.C. 134

,

141

,

145

, whether

successful or unsuccessful (

35 U.S.C. 154(b)(1)(B)(ii)

). The

provisions of

35

U.S.C. 154(b)(1)(B)(iii)

concerning the period of pendency

consumed by delays in the processing of the application requested by the applicant are

treated in

37 CFR

1.704

as such applicant delays are also circumstances constituting

a failure of an applicant to engage in reasonable efforts to conclude processing or

examination of an application.

The U.S. Court of Appeals for the Federal Circuit

(Federal Circuit) decided that, with respect to the provisions of

35 U.S.C.

154(b)(1)(B)(i)

, that: (1) any time consumed by continued

examination under

35

U.S.C. 132(b)

is subtracted in determining the extent to which the

period defined in

35

U.S.C. 154(b)(1)(B)

exceeds three years, regardless of when the

continued examination under

35 U.S.C. 132(b)

was initiated; but

eals for the Federal Circuit

(Federal Circuit) decided that, with respect to the provisions of

35 U.S.C.

154(b)(1)(B)(i)

, that: (1) any time consumed by continued

examination under

35

U.S.C. 132(b)

is subtracted in determining the extent to which the

period defined in

35

U.S.C. 154(b)(1)(B)

exceeds three years, regardless of when the

continued examination under

35 U.S.C. 132(b)

was initiated; but

(2) the time consumed by continued examination under

35 U.S.C. 132(b)

does not include

the time after a notice of allowance is mailed, unless the Office actually resumes

examination of the application after allowance. See

Novartis AG v.

Lee,

740 F.3d 593, 109 USPQ2d 1385 (Fed. Cir. 2014). Where an interference

has been declared following the filing of a request for continued examination, the

period after termination of the interference through the mailing of the notice of

allowance constitutes time consumed by continued examination requested by the applicant

and is excluded from the three year calculation under

35 U.S.C.

154(b)(1)(B)

. See

Mayo Found. for Med. Educ. &

Research v. Iancu,

938 F.3d 1343, 2019 USPQ2d 346079 (Fed. Cir. 2019). In

one instance, a court found that the time consumed by continued examination did not

begin on the date of filing of the request for continued examination because the Office

had failed to recognize that it had received any request from the applicant to begin

continued examination and erroneously had determined the application to be abandoned.

Under these facts, the court found that the Office may consider factors such as when the

Office acknowledges receipt of the request for continued examination, or when the

request for continued examination is forwarded to the examiner, to determine when the

period excluded as time consumed by continued examination begins. See

Ariad

Pharm. Inc v. Matal,

283 F. Supp. 3d 503 (E.D. Va. 2018).

Effective January 9, 2015,

37 CFR

1.703(b)(1)

was amended to provide that the time consumed by

continued examination of the application under

35 U.S.C

nued examination, or when the

request for continued examination is forwarded to the examiner, to determine when the

period excluded as time consumed by continued examination begins. See

Ariad

Pharm. Inc v. Matal,

283 F. Supp. 3d 503 (E.D. Va. 2018).

Effective January 9, 2015,

37 CFR

1.703(b)(1)

was amended to provide that the time consumed by

continued examination of the application under

35 U.S.C. 132(b)

is the number of

days, if any, in the period beginning on the date on which any request for continued

examination of the application under

35 U.S.C. 132(b)

was filed and

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

35 U.S.C. 151

. The

changes to

37 CFR 1.703(b)(1)

apply to any

patent granted before, on, or after January 9, 2015. The time period between a request

for continued examination and a notice of allowance is “time consumed by continued

examination of the application requested by the applicant under

section 132(b)

”

regardless of whether the Office issues an Office action under

35 U.S.C. 132

.

Thus, any period of examination after the mailing of a notice of allowance resulting

from the filing of a subsequent request for continued examination would also be

considered “time consumed by continued examination,” but a period of examination after

the mailing of a notice of allowance resulting from the Office

sua

sponte

reopening prosecution would not be considered “time consumed by

continued examination” (unless the applicant subsequently files a request for continued

examination).

For example, if a first request for continued examination

is filed before a notice of allowance has been mailed and a second request for continued

examination is filed after a notice of allowance has been mailed, the time consumed by

continued examination of the application under

35 U.S.C

sumed by

continued examination” (unless the applicant subsequently files a request for continued

examination).

For example, if a first request for continued examination

is filed before a notice of allowance has been mailed and a second request for continued

examination is filed after a notice of allowance has been mailed, the time consumed by

continued examination of the application under

35 U.S.C. 132(b)

is the number of

days in the period beginning on the date on which the first request for continued

examination was filed and ending on the date of mailing of the notice of allowance

following the first request for continued examination, plus the number of days in the

period beginning on the date on which the second request for continued examination was

filed and ending on the date of mailing of the notice of allowance following the second

request for continued examination. Note that the “time consumed by continued

examination” as measured by

37 CFR 1.703(b)(1)

may include

non-contiguous periods if the applicant files a subsequent request for continued

examination after a notice of allowance is mailed.

In contrast, if a second request for continued examination

is filed without a notice of allowance having been mailed between the filing of the

first and second requests for continued examination and a notice of allowance is mailed

after the second request for continued examination, the time consumed by continued

examination of the application under

35 U.S.C. 132(b)

is the number of

days in the period beginning on the date on which the first request for continued

examination was filed and ending on the date of mailing of the notice of allowance.

35 U.S.C.

154(b)(1)(B)(i)

provides that the period under

35 U.S.C.

154(b)(1)(B)

does not include “

any

time consumed by

continued examination of the application requested by the applicant under

section

132(b)

” (emphasis added)

ber of

days in the period beginning on the date on which the first request for continued

examination was filed and ending on the date of mailing of the notice of allowance.

35 U.S.C.

154(b)(1)(B)(i)

provides that the period under

35 U.S.C.

154(b)(1)(B)

does not include “

any

time consumed by

continued examination of the application requested by the applicant under

section

132(b)

” (emphasis added). Therefore, a second or subsequent

request for continued examination will be treated the same as the first request for

continued examination with respect to period between the filing of the request for

continued examination and a notice of allowance being considered “time consumed by

continued examination of the application requested by the applicant under

section

132(b)

.”

The “time consumed by continued examination of the

application requested by the applicant under

section 132(b)

” is the number of

days, if any, in the period beginning on the date on which a request for continued

examination was filed and ending on the date of mailing of the notice of allowance

(PTOL-85), regardless of whether the notice of allowability (PTOL-37) and notice of

allowance (PTOL-85) are mailed or issued on different days, and also regardless of

whether the Office has issued multiple consecutive notices of allowability (PTOL-37). As

background, the Office issues a notice of allowability (PTOL-37) and a notice of

allowance (PTOL-85) when an application is in condition for allowance. These notices are

generally mailed or issued on the same day, but the notice of allowability (PTOL-37) and

notice of allowance (PTOL-85) are occasionally mailed or issued on different days. The

Office also occasionally mails or issues multiple consecutive notices of allowability

(PTOL-37) (e.g., a notice of allowability and then a supplemental notice of

allowability) and rarely issues multiple consecutive notices of allowance (e.g., a

notice of allowance (PTOL-85) and then a supplemental notice of allowance (PTOL-85))

nce (PTOL-85) are occasionally mailed or issued on different days. The

Office also occasionally mails or issues multiple consecutive notices of allowability

(PTOL-37) (e.g., a notice of allowability and then a supplemental notice of

allowability) and rarely issues multiple consecutive notices of allowance (e.g., a

notice of allowance (PTOL-85) and then a supplemental notice of allowance (PTOL-85)). In

the rare instance in which the Office issues multiple consecutive notices of allowance

(PTOL-85), the “time consumed by continued examination of the application requested by

the applicant under

section 132(b)

” is the number of days, if any, in the period

beginning on the date on which a request for continued examination was filed and ending

on the date of mailing of the first notice of allowance (PTOL-85).

III.

PERIODS OF ADJUSTMENT FOR INTERFERENCE OR

DERIVATION

37 CFR

1.703(c)

pertains to the provisions of

35 U.S.C.

154(b)(1)(C)(i)

and indicates that the period of adjustment under

37 CFR

1.702(c)

is the sum of the following periods (to the extent that

such periods are not overlapping): (1) the number of days, if any, in the period

beginning on the date an 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 (2) the number of days, if any, in the period beginning on the date

prosecution in the application was suspended by the 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.

IV.

PERIODS OF ADJUSTMENT FOR APPLICATIONS

UNDER A SECRECY ORDER

37 CFR

1.703(d)

pertains to the provisions of

35 U.S.C

e number of days, if any, in the period beginning on the date

prosecution in the application was suspended by the 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.

IV.

PERIODS OF ADJUSTMENT FOR APPLICATIONS

UNDER A SECRECY ORDER

37 CFR

1.703(d)

pertains to the provisions of

35 U.S.C.

154(b)(1)(C)(ii)

and indicates that the period of adjustment under

37 CFR

1.702(d)

is the sum of the following periods (to the extent that

such periods are not overlapping): (1) the number of days, if any, the application was

maintained in a sealed condition under

35 U.S.C. 181

; (2) the number of

days, if any, in the period beginning on the date of mailing of an examiner’s answer

under

37 CFR

41.39

in the application under secrecy order and ending on the

date the secrecy order was removed; (3) the number of days, if any, in the period

beginning on the date applicant was notified that an interference or derivation

proceeding under

35

U.S.C. 135(a)

would be instituted but for the secrecy order and

ending on the date the secrecy order was removed; and (4) the number of days, if any, in

the period beginning on the date of notification under

37 CFR 5.3(c)

and

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

35 U.S.C. 151

and

37 CFR

1.311

.

V.

PERIODS OF ADJUSTMENT FOR SUCCESSFUL

APPEAL

37 CFR

1.703(e)

pertains to the provisions of

35 U.S.C.

154(b)(1)(C)(iii)

and indicates that the period of adjustment

under

37 CFR

1.702(e)

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

beginning on the date on which a jurisdiction over the application passes to the Patent

Trial and Appeal Board under

37 CFR 41.35(a)

or

37 CFR 41.31

if

the notice of allowance was issued prior to September 17, 2012, and ending on the date

of a final decision in favor of the applicant by the 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

e period

beginning on the date on which a jurisdiction over the application passes to the Patent

Trial and Appeal Board under

37 CFR 41.35(a)

or

37 CFR 41.31

if

the notice of allowance was issued prior to September 17, 2012, and ending on the date

of a final decision in favor of the applicant by the 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

.

The Federal Circuit has held that the provisions of

35 U.S.C.

154(b)(1)(C)(iii)

impose two requirements: that an adverse

determination of patentability be reversed, and that the application reviewed in that

appeal issue as a patent as a result of that reversal.

SawStop Holding LLC v.

Vidal,

48 F.4th 1355, 1361, 2022 USPQ2d 836 (Fed. Cir. 2022). In

SawStop,

the Board decision included a new ground of rejection

without maintaining the examiner’s rejection of the claim, and therefore, the court

determined there was no reversal of an adverse determination of patentability under

35 U.S.C.

154(b)(1)(C)(iii)

because there was no substantive change in the

patentability of the claim at issue as the claim remained unpatentable both before and

after the appeal. Likewise, there is no reversal of an adverse determination of

patentability under

35

U.S.C. 154(b)(1)(C)(iii)

if, in lieu of issuing an examiner’s

answer, the examiner reopens prosecution after the filing of the appeal brief under

37 CFR

41.37

. See

Chudik v. Hirshfeld,

987 F.3d 1033,

2021 USPQ2d 149 (Fed. Cir. 2021). Furthermore, in order to issue as a patent as a result

of the reversal, the claim that ultimately issues cannot differ substantively from the

claim that was reviewed. See

SawStop,

48 F.4th at 1362. “The plain

language of ‘issued under a decision in the review’ means that at least one claim must

‘issue[] under’ the mandate of the appellate decision.”

Id

F.3d 1033,

2021 USPQ2d 149 (Fed. Cir. 2021). Furthermore, in order to issue as a patent as a result

of the reversal, the claim that ultimately issues cannot differ substantively from the

claim that was reviewed. See

SawStop,

48 F.4th at 1362. “The plain

language of ‘issued under a decision in the review’ means that at least one claim must

‘issue[] under’ the mandate of the appellate decision.”

Id.

“Because

claim 11 … was subject to an adverse determination of patentability both before and

after the appeal, and because the claim issued only after significant substantive

post-appeal prosecution and amendment, we affirm the District Court's determination that

the … patent did not ‘issue[] under a decision in the review reversing an adverse

determination of patentability’ as that expression is used in 35 U.S.C. §

154(b)(1)(C)(iii).”

Id.

at 1362-63.

VI.

DETERMINATION OF

ADJUSTMENT

37 CFR

1.703(f)

indicates that the adjustment will run from the

expiration date of the patent as set forth in

35 U.S.C. 154(a)(2)

and also

indicates that to the extent that periods of delay attributable to the grounds specified

in

37 CFR

1.702

overlap, the period of adjustment will not exceed the actual

number of days the issuance of the patent was delayed (

35 U.S.C.

154(b)(2)(A)

).

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

provides that

"[t]o the extent that periods of delay attributable to grounds specified in

[

35 U.S.C.

154(b)(1)

] overlap, the period of any adjustment granted under

this subsection shall not exceed the actual number of days the issuance of the patent

was delayed." The USPTO previously had interpreted this provision as covering situations

in which a delay by the USPTO contributes to multiple bases for adjustment (the

"pre-Wyeth" interpretation of

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

). See

Explanation of

37 CFR 1.703(f)

and of the United

States Patent and Trademark Office Interpretation of

35 U.S.C.

154(b)(2)(A)

,

69 FR 34283 (June 21, 2004), 1284 OG 56

(July 13, 2004)

." The USPTO previously had interpreted this provision as covering situations

in which a delay by the USPTO contributes to multiple bases for adjustment (the

"pre-Wyeth" interpretation of

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

). See

Explanation of

37 CFR 1.703(f)

and of the United

States Patent and Trademark Office Interpretation of

35 U.S.C.

154(b)(2)(A)

,

69 FR 34283 (June 21, 2004), 1284 OG 56

(July 13, 2004). The United States Court of Appeals for the Federal Circuit, however,

held that the USPTO's earlier interpretation of

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

was

erroneous, and that periods of delay overlap under

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

only if the

periods which measure the amount of adjustment under

35 U.S.C. 154(b)(1)

occur on the

same calendar day. See

Wyeth v. Kappos,

591 F.3d 1364, 93 USPQ2d 1257

(Fed. Cir. 2010).

37 CFR

1.703(f)

also specifically indicates that the term of a patent

entitled to adjustment under

37 CFR 1.702

and

1.703

shall be

adjusted for the sum of the periods calculated under

37 CFR 1.703(a) through (e)

, to the

extent that such periods are not overlapping, less the sum of the periods calculated

under

37 CFR

1.704

.

Moreover,

37 CFR 1.703(f)

provides that the

date indicated on any certificate of mailing or transmission under

37 CFR 1.8

shall

not be taken into account in this calculation. The date indicated on a certificate of

mailing is used only to determine whether the correspondence is timely (including

whether any extension of the time and fee are required) so as to avoid abandonment of

the application or termination or dismissal of proceedings. The actual date of receipt

of the correspondence in the Office is used for all other purposes. See

37 CFR

1.8(a)

. Thus, while the date indicated on any certificate of

mailing or transmission under

37 CFR 1.8

will continue to be taken

into account in determining timeliness, the date of filing (

37 CFR 1.6

) will

be the date used in a patent term adjustment calculation

or dismissal of proceedings. The actual date of receipt

of the correspondence in the Office is used for all other purposes. See

37 CFR

1.8(a)

. Thus, while the date indicated on any certificate of

mailing or transmission under

37 CFR 1.8

will continue to be taken

into account in determining timeliness, the date of filing (

37 CFR 1.6

) will

be the date used in a patent term adjustment calculation. Applicant may wish to consider

the use of the USPTO patent electronic filing system, the Priority Mail

Express

®

Post Office to Addressee service of the United

States Postal Service (

37 CFR 1.10

) or facsimile transmission (

37 CFR 1.6(d)

),

when permitted, for replies to be accorded the earliest possible filing date for patent

term adjustment calculations. Alternatively, applicant may choose to mail correspondence

with sufficient time to ensure that the correspondence is received in the Office (and

stamped with a date of receipt) before the expiration of the three-month period.

Applicants are encouraged to check the USPTO patent electronic filing system to verify

the date of deposit entered in One Patent Service Gateway (OPSG) for the correspondence.

Applicants should contact the Office for correction of any such entries prior to the

grant of the patent. At the time of the grant of the patent, the patent term adjustment

calculation will be made with the dates in OPSG. Thereafter, a patent term adjustment

accompanied by the requisite fee and statement or showing, will be necessary to have any

reduction of patent term under

37 CFR 1.704

reinstated.

Finally,

37 CFR 1.703(g)

indicates that no

patent, the term of which has been disclaimed beyond a specified date, shall be adjusted

under

37 CFR

1.702

and

1.703

beyond the expiration date

specified in the disclaimer (

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

).

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