# MPEP § 2732: Reduction of Period of Adjustment of Patent Term

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2732

## Section

- **Citation:** MPEP § 2732
- **Heading:** Reduction of Period of Adjustment of Patent Term
- **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 § 2732

## Text

[Editor Note:
37 CFR
1.704(d)(3)
only applies for statements under
37 CFR
1.704(d)
filed on or after July 17, 2023.
37 CFR 1.704(c)(2)-(4),
(c)(6), and (c)(9)-(10)
, as reproduced below, include changes
applicable only to original utility and plant patents issuing from applications filed on
or after May 29, 2000, in which a notice of allowance was mailed on or after July 16,
2020. For 37 CFR 1.704(c)(2)-(4), (c)(6), and (c)(9)-(10) in effect for applications
filed on or after May 29, 2000, in which there was no notice of allowance mailed on or
after July 16, 2020, see 37 CFR 1.704 (2015‑03‑10 thru 2020‑07‑15).
37 CFR
1.704(c)(12)
, as reproduced below, include changes applicable only
to applications in which a request for continued examination under
35 U.S.C. 132(b)
and
37 CFR
1.114
was filed on or after March 10, 2015. In addition,
37 CFR
1.704(c)(11)
,
(c)(13)
, and
(c)(14)
,
as reproduced below, include changes applicable only to patent applications filed under
35 U.S.C.
111
on or after December 18, 2013, and to international patent
applications in which the national stage commenced under
35 U.S.C. 371
on
or after December 18, 2013. For
37 CFR 1.704(c)(11)
and
(c)(12)
in effect for applications filed before (and
international applications in which the national stage commenced before) December 18,
2013, and in which a notice of appeal was filed on or after September 17, 2012, see
37 CFR
1.704 (2012-09-17 thru 2013-12-17)
. For
37 CFR
1.704(c)(11)
in effect for applications in which there was a
notice of appeal filed prior to September 17, 2012, see
37 CFR 1.704(c)(11)
(pre-2012-09-17)
.
37 CFR 1.704(e)
below includes
changes applicable only to applications in which a notice of allowance was mailed on or
after April 1, 2013. For 37 CFR 1.704(e) in effect for applications in which no notice
of allowance mailed on or after April 1, 2013, see
37 CFR 1.704(e)
(pre-2013-03-31)
.]
37 CFR 1.704  Reduction of period of adjustment of patent term.
see
37 CFR 1.704(c)(11)
(pre-2012-09-17)
.
37 CFR 1.704(e)
below includes
changes applicable only to applications in which a notice of allowance was mailed on or
after April 1, 2013. For 37 CFR 1.704(e) in effect for applications in which no notice
of allowance mailed on or after April 1, 2013, see
37 CFR 1.704(e)
(pre-2013-03-31)
.]
37 CFR 1.704  Reduction of period of adjustment of patent term.
(a) The period of adjustment of the term of a patent under
§§ 1.703(a)
through (e)
shall be reduced by a period equal to the period
of time during which the applicant failed to engage in reasonable efforts to
conclude prosecution (processing or examination) of the application.
(b) With respect to the grounds for adjustment set forth in
§§ 1.702(a)
through (e)
, and in particular the ground of adjustment set
forth in
§
1.702(b)
, an applicant shall be deemed to have failed to
engage in reasonable efforts to conclude processing or examination of an
application for the cumulative total of any periods of time in excess of three
months that are taken to reply to any notice or action by the Office making any
rejection, objection, argument, or other request, measuring such three-month
period from the date the notice or action was mailed or given to the applicant, in
which case the period of adjustment set forth in
§ 1.703
shall be reduced by the number of days, if any, beginning on the day after the
date that is three months after the date of mailing or transmission of the Office
communication notifying the applicant of the rejection, objection, argument, or
other request and ending on the date the reply was filed. The period, or shortened
statutory period, for reply that is set in the Office action or notice has no
effect on the three-month period set forth in this paragraph.
e day after the
date that is three months after the date of mailing or transmission of the Office
communication notifying the applicant of the rejection, objection, argument, or
other request and ending on the date the reply was filed. The period, or shortened
statutory period, for reply that is set in the Office action or notice has no
effect on the three-month period set forth in this paragraph.
(c) Circumstances that constitute a failure of the applicant to
engage in reasonable efforts to conclude processing or examination of an
application also include the following circumstances, which will result in the
following reduction of the period of adjustment set forth in
§ 1.703
to
the extent that the periods are not overlapping:
(1) Suspension of action under
§
1.103
at the applicant’s request, in which case the
period of adjustment set forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the date a request for
suspension of action under
§ 1.103
was filed and
ending on the date of the termination of the suspension;
(2) Deferral of issuance of a patent under
§ 1.314
, in which case the period of adjustment set
forth in
§
1.703
shall be reduced by the number of days, if any,
beginning on the date a request for deferral of issuance of a patent under
§
1.314
was filed and ending on the earlier of the date
a request to terminate the deferral was filed or the date the patent was
issued;
(3) Abandonment of the application or late payment of the issue
fee, in which case the period of adjustment set forth in
§
1.703
shall be reduced by the number of days, if any,
beginning on the date of abandonment or the day after the date the issue fee
was due and ending on the date the grantable petition to revive the
application or accept late payment of the issue fee was filed;
ent was
issued;
(3) Abandonment of the application or late payment of the issue
fee, in which case the period of adjustment set forth in
§
1.703
shall be reduced by the number of days, if any,
beginning on the date of abandonment or the day after the date the issue fee
was due and ending on the date the grantable petition to revive the
application or accept late payment of the issue fee was filed;
(4) Failure to file a petition to withdraw the holding of
abandonment or to revive an application within two months from the date of
mailing of a notice of abandonment, in which case the period of adjustment
set forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the day after the date two
months from the date of mailing of a notice of abandonment and ending on the
date a petition to withdraw the holding of abandonment or to revive the
application was filed;
(5) Conversion of a provisional application under
35
U.S.C. 111(b)
to a nonprovisional application under
35
U.S.C. 111(a)
pursuant to
35 U.S.C.
111(b)(5)
, in which case the period of adjustment set
forth in
§
1.703
shall be reduced by the number of days, if any,
beginning on the date the application was filed under
35 U.S.C.
111(b)
and ending on the date a request in compliance
with
§
1.53(c)(3)
to convert the provisional application into
a nonprovisional application was filed;
(6) Submission of a preliminary amendment or other preliminary
paper less than one month before the mailing of an Office action under
35
U.S.C. 132
or notice of allowance under
35
U.S.C. 151
that requires the mailing of a supplemental
Office action or notice of allowance, in which case the period of adjustment
set forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the day after the date that is
eight months from either the date on which the application was filed under
35 U.S.C. 111(a)
or the date of commencement of the
national stage under
35 U.S.C
.S.C. 151
that requires the mailing of a supplemental
Office action or notice of allowance, in which case the period of adjustment
set forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the day after the date that is
eight months from either the date on which the application was filed under
35 U.S.C. 111(a)
or the date of commencement of the
national stage under
35 U.S.C. 371(b) or (f)
in an international application and ending on the date the preliminary
amendment or other preliminary paper was filed;
(7) Submission of a reply having an omission (
§
1.135(c))
, in which case the period of adjustment set
forth in
§
1.703
shall be reduced by the number of days, if any,
beginning on the day after the date the reply having an omission was filed
and ending on the date that the reply or other paper correcting the omission
was filed;
(8) Submission of a supplemental reply or other paper, other
than a supplemental reply or other paper expressly requested by the
examiner, after a reply has been filed, in which case the period of
adjustment set forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the day after the date the
initial reply was filed and ending on the date that the supplemental reply
or other such paper was filed;
(9) Submission of an amendment or other paper after a decision
by the Patent Trial and Appeal Board, other than a decision designated as
containing a new ground of rejection under
§ 41.50(b)
of this title or statement under
§
41.50(c)
of this title, or a decision by a Federal
court, less than one month before the mailing of an Office action under
35
U.S.C. 132
or a notice of allowance under
35
U.S.C
) Submission of an amendment or other paper after a decision
by the Patent Trial and Appeal Board, other than a decision designated as
containing a new ground of rejection under
§ 41.50(b)
of this title or statement under
§
41.50(c)
of this title, or a decision by a Federal
court, less than one month before the mailing of an Office action under
35
U.S.C. 132
or a notice of allowance under
35
U.S.C. 151
that requires the mailing of a supplemental
Office action or supplemental notice of allowance, in which case the period
of adjustment set forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the day after the date of the
decision by the Patent Trial and Appeal Board or by a Federal court and
ending on date the amendment or other paper was filed;
(10) Submission of an amendment under
§ 1.312
or other paper, other than an amendment under
§
1.312
or other paper expressly requested by the Office
or a request for continued examination in compliance with
§
1.114
, after a notice of allowance has been given or
mailed, in which case the period of adjustment set forth in
§
1.703
shall be reduced by the number of days, if any,
beginning on the day after the date of mailing of the notice of allowance
under
35
U.S.C. 151
and ending on the date the amendment under
§
1.312
or other paper was filed;
(11) Failure to file an appeal brief in compliance
with
§
41.37
of this chapter within three months from the
date on which a notice of appeal to the Patent Trial and Appeal Board was
filed under
35 U.S.C. 134
and
§
41.31
of this chapter, in which case the period of
adjustment set forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the day after the date three
months from the date on which a notice of appeal to the Patent Trial and
Appeal Board was filed under
35 U.S.C. 134
and
§
41.31
of this chapter, and ending on the date an
appeal brief in compliance with
§ 41.37
of this chapter
or a request for continued examination in compliance with
§
1.114
was filed;
1.703
shall be reduced
by the number of days, if any, beginning on the day after the date three
months from the date on which a notice of appeal to the Patent Trial and
Appeal Board was filed under
35 U.S.C. 134
and
§
41.31
of this chapter, and ending on the date an
appeal brief in compliance with
§ 41.37
of this chapter
or a request for continued examination in compliance with
§
1.114
was filed;
(12) Submission of a request for continued
examination under
35 U.S.C. 132(b)
after
any notice of allowance under
35 U.S.C. 151
has been
mailed, in which case the period of adjustment set forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the day after the date of
mailing of the notice of allowance under
35 U.S.C. 151
and ending
on the date the request for continued examination under
35 U.S.C.
132(b)
was filed;
(13) Failure to provide an application in
condition for examination as defined in paragraph (f) of this section within
eight months from either the date on which the application was filed under
35 U.S.C. 111(a)
or the date of commencement of the
national stage under
35 U.S.C. 371(b) or (f)
in an international application, in which case the period of adjustment set
forth in
§ 1.703
shall be reduced
by the number of days, if any, beginning on the day after the date that is
eight months from either the date on which the application was filed under
35 U.S.C. 111(a)
or the date of commencement of the
national stage under
35 U.S.C. 371(b) or (f)
in an international application and ending on the date the application is in
condition for examination as defined in paragraph (f) of this section;
and
(14) Further prosecution via a continuing application, in which
case the period of adjustment set forth in
§
1.703
shall not include any period that is prior to
the actual filing date of the application that resulted in the patent.
C. 371(b) or (f)
in an international application and ending on the date the application is in
condition for examination as defined in paragraph (f) of this section;
and
(14) Further prosecution via a continuing application, in which
case the period of adjustment set forth in
§
1.703
shall not include any period that is prior to
the actual filing date of the application that resulted in the patent.
(d)
(1) A paper containing only an information
disclosure statement in compliance with
§§ 1.97
and
1.98
will not be considered a failure to engage in
reasonable efforts to conclude prosecution (processing or examination) of
the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this
section, and a request for continued examination in compliance with
§
1.114
with no submission other than an information
disclosure statement in compliance with
§§ 1.97
and
1.98
will not be considered a failure to engage in
reasonable efforts to conclude prosecution (processing or examination) of
the application under paragraph (c)(12) of this section, if the paper or
request for continued examination is accompanied by a statement that each
item of information contained in the information disclosure statement:
(i) Was first cited in any communication
from a patent office in a counterpart foreign or international
application or from the Office, and this communication was not
received by an individual designated in
§
1.56(c)
more than thirty days prior to the
filing of the information disclosure statement; or
(ii) Is a communication that was issued by a
patent office in a counterpart foreign or international application or
by the Office, and this communication was not received by any
individual designated in
§ 1.56(c)
more
than thirty days prior to the filing of the information disclosure
statement.
(2) The thirty-day period set forth in paragraph
the
filing of the information disclosure statement; or
(ii) Is a communication that was issued by a
patent office in a counterpart foreign or international application or
by the Office, and this communication was not received by any
individual designated in
§ 1.56(c)
more
than thirty days prior to the filing of the information disclosure
statement.
(2) The thirty-day period set forth in paragraph
(d)(1) of this section is not extendable.
(3) The statement under paragraph (d)(1) of this
section must be submitted on the Office form (PTO/SB/133) provided for such
a patent term adjustment statement using the appropriate document code
(PTA.IDS). Otherwise, the paper or request for continued examination will be
treated as not accompanied by a statement under paragraph (d)(1) of this
section unless an application for patent term adjustment, in compliance with
§ 1.705(b)
, is filed,
establishing that the paper or request for continued examination was
accompanied by a statement in compliance with paragraph (d)(1) of this
section. No changes to statements on this Office form may be made. The
presentation to the Office (whether by signing, filing, submitting, or later
advocating) of this form, whether by a practitioner or non-practitioner,
constitutes a certification under
§ 11.18(b)
of this
chapter that the existing text and any certification statements on this form
have not been altered.
(e) The submission of a request under
§ 1.705(c)
for reinstatement of reduced patent term adjustment will not be considered a
failure to engage in reasonable efforts to conclude prosecution (processing or
examination) of the application under paragraph (c)(10) of this section.
der
§ 11.18(b)
of this
chapter that the existing text and any certification statements on this form
have not been altered.
(e) The submission of a request under
§ 1.705(c)
for reinstatement of reduced patent term adjustment will not be considered a
failure to engage in reasonable efforts to conclude prosecution (processing or
examination) of the application under paragraph (c)(10) of this section.
(f) An application filed under
35 U.S.C.
111(a)
is in condition for examination when it includes a
specification, including at least one claim and an abstract (§
1.72(b)
),
and has papers in compliance with §
1.52
, drawings (if any) in
compliance with §
1.84
, any English translation
required by §
1.52(d)
or §
1.57(a)
, a “Sequence Listing”
in compliance with §§
1.821
through
1.825
(if applicable), a “Sequence Listing XML” in
compliance with §§
1.831
through
1.835
(if applicable), an inventor’s oath or declaration or
an application data sheet containing the information specified in §
1.63(b)
, the basic filing fee (§
1.16(a)
or
(c)
), the search fee (§
1.16(k)
or
(m)
), the
examination fee (§
1.16(o)
or
(q)
), any
certified copy of the previously filed application required by §
1.57(a)
,
and any application size fee required by the Office under §
1.16(s)
. An
international application is in condition for examination when it has entered the
national stage as defined in §
1.491(b)
, and includes a
specification, including at least one claim and an abstract (§
1.72(b)
),
and has papers in compliance with §
1.52
, drawings (if any) in
compliance with §
1.84
, a “Sequence Listing” in
compliance with §§
1.821
through
1.825
(if applicable), a “Sequence Listing XML” in
compliance with §§
1.831
through
1.835
(if applicable), an inventor’s oath or declaration or
an application data sheet containing the information specified in §
1.63(b)
, the search fee (§
1.492(b)
),
the examination fee (§
1.492(c)
), and any application
size fee required by the Office under §
1.492(j)
isting” in
compliance with §§
1.821
through
1.825
(if applicable), a “Sequence Listing XML” in
compliance with §§
1.831
through
1.835
(if applicable), an inventor’s oath or declaration or
an application data sheet containing the information specified in §
1.63(b)
, the search fee (§
1.492(b)
),
the examination fee (§
1.492(c)
), and any application
size fee required by the Office under §
1.492(j)
. An application shall
be considered as having papers in compliance with §
1.52
,
drawings (if any) in compliance with §
1.84
, and a “Sequence Listing”
in compliance with §§
1.821
through
1.825
(if applicable), or a “Sequence Listing XML” in
compliance with §§
1.831
through
1.835
(if applicable), for purposes of this paragraph (f)
on the filing date of the latest reply (if any) correcting the papers, drawings,
“Sequence Listing,” or “Sequence Listing XML” that is prior to 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.
37 CFR
1.704
implements the provisions of
35 U.S.C.
154(b)(2)(C)
which provides that the period of patent term adjustment
under
35 U.S.C.
154(b)(1)
“shall be reduced by a period equal to the period of time
during which the applicant failed to engage in reasonable efforts to conclude prosecution
(processing or examination) of the application,” and specifies certain circumstances as
constituting a failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. Further,
35 U.S.C. 154(b)(2)(C)(iii)
gives the
Office the authority to prescribe regulations establishing circumstances that constitute “a
failure of an applicant to engage in reasonable efforts to conclude processing or
examination of an application.”
35 U.S.C
stances as
constituting a failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. Further,
35 U.S.C. 154(b)(2)(C)(iii)
gives the
Office the authority to prescribe regulations establishing circumstances that constitute “a
failure of an applicant to engage in reasonable efforts to conclude processing or
examination of an application.”
35 U.S.C. 154(b)(2)(C)
does not require
the applicant’s action or inaction (that amounts to a failure to engage in reasonable
efforts to conclude prosecution of the application) to have caused or contributed to patent
term adjustment for the period of adjustment to be reduced due to such action or inaction.
The patent term adjustment provisions of
35 U.S.C. 154(b)
create a balanced
system allowing for patent term adjustment due to Office delays for a reasonably diligent
applicant. Since the public has an interest in the technology disclosed and covered by a
patent being available to the public at the earliest possible date,
35 U.S.C.
154(b)(2)(C)(i)
provides that patent term adjustment is reduced by
any period of time during which applicant failed to engage in reasonable efforts to
conclude prosecution of the application, regardless of whether the applicant’s actions or
inactions caused or contributed to patent term adjustment.
I.
37 CFR 1.704(a)
37 CFR
1.704(a)
implements the provisions of
35 U.S.C.
154(b)(2)(C)(i)
and sets forth that the period of adjustment shall
be reduced by a period equal to the period of time during which the applicant failed to
engage in reasonable efforts to conclude prosecution (i.e., processing or examination)
of an application.
II
or
inactions caused or contributed to patent term adjustment.
I.
37 CFR 1.704(a)
37 CFR
1.704(a)
implements the provisions of
35 U.S.C.
154(b)(2)(C)(i)
and sets forth that the period of adjustment shall
be reduced by a period equal to the period of time during which the applicant failed to
engage in reasonable efforts to conclude prosecution (i.e., processing or examination)
of an application.
II.
37 CFR 1.705(b)
37 CFR
1.704(b)
provides that with respect to the ground for adjustments
set forth in
37 CFR
1.702(a) through (e)
, and in particular
37 CFR 1.702(b)
,
an applicant shall be deemed to have failed to engage in reasonable efforts to conclude
prosecution for the cumulative total of any periods of time in excess of three months
that are taken to reply to any notice or action by the Office making any rejection,
objection, argument, or other request, measuring such three-month period from the date
the notice or action was mailed or given to the applicant. A Notice of Omitted Items in
a Nonprovisional Application, however, is not a notice or action by the Office making a
rejection, objection, argument, or other request within the meaning of
35 U.S.C.
154(b)(2)(C)(ii)
or
37 CFR 1.704(b)
, since the Office
does not require a reply to that notice to continue the processing and examination of an
application.
37 CFR
1.704(b)
indicates that the period of adjustment set forth in
37 CFR
1.703
shall be reduced by the number of days, if any, beginning on
the day after the date that is three months after the date of mailing or transmission of
the Office communication notifying the applicant of the rejection, objection, argument,
or other request and ending on the date the reply was filed. As discussed above, a reply
is considered filed on the date of its actual receipt in the Office as defined by
37 CFR
1.6
, and the date indicated on any certificate of mailing or
transmission under
37
CFR 1.8
will not be taken into account for patent term adjustment
purposes
notifying the applicant of the rejection, objection, argument,
or other request and ending on the date the reply was filed. As discussed above, a reply
is considered filed on the date of its actual receipt in the Office as defined by
37 CFR
1.6
, and the date indicated on any certificate of mailing or
transmission under
37
CFR 1.8
will not be taken into account for patent term adjustment
purposes.
The three-month period in
37 CFR 1.704(b)
applies to the
Office notices and letters issued as part of the pre-examination processing of an
application (except a Notice of Omitted Items in a Nonprovisional Application as
discussed above). These notices include: (1) a Notice of Incomplete Nonprovisional
Application (except as to any period prior to the filing date ultimately accorded to the
application); (2) a Notice to File Missing Parts of Non-Provisional Application; (3) an
Informational Notice to Applicant; (4) a Notice to File Corrected Application Papers
Filing Date Granted; or (5) a Notice to Comply with Requirements for Patent Applications
Containing Nucleotide and/or Amino Acid Sequence Disclosures.
In addition, the three-month period in
35 U.S.C.
154(b)(2)(C)(ii)
and
37 CFR 1.704(b)
applies regardless
of the period for reply set in the Office action or notice. For example, if an Office
action sets a two-month period for reply (restriction requirement), the applicant may
obtain a one-month extension of time under
37 CFR 1.136(a)
before being subject
to a reduction of patent term adjustment under
35 U.S.C. 154(b)(2)(C)(ii)
and
37 CFR
1.704(b)
. If, however, an Office action sets a six-month period
for reply, as is commonly set in applications subject to secrecy orders (see
MPEP §
130
), the applicant is subject to a reduction of patent term
adjustment under
35
U.S.C. 154(b)(2)(C)(ii)
and
37 CFR 1.704(b)
if the applicant
does not reply to the Office action within three months, notwithstanding that a reply
may be timely filed six months after the mailing date of the Office action
month period
for reply, as is commonly set in applications subject to secrecy orders (see
MPEP §
130
), the applicant is subject to a reduction of patent term
adjustment under
35
U.S.C. 154(b)(2)(C)(ii)
and
37 CFR 1.704(b)
if the applicant
does not reply to the Office action within three months, notwithstanding that a reply
may be timely filed six months after the mailing date of the Office action. If the last
day of the three-month time period from the Office communication notifying the applicant
of the rejection, objection, argument, or other request falls on a Saturday, Sunday, or
federal holiday within the District of Columbia, then action, may be taken, or fee paid,
on the next succeeding secular or business day without loss of any patent term
adjustment under
37 CFR 1.704(b)
. See
ArQule
v. Kappos,
793 F.Supp2d 214 (D.D.C. 2011). For example, no reduction in
patent term adjustment would occur if an applicant’s three-month reply time period
expires on a Saturday and the applicant files a reply that is received by the Office on
the following Monday, which is not a federal holiday within the District of Columbia. In
this case, any patent term adjustment would not be reduced under
37 CFR
1.704(b)
because the reply was received on Monday, the next
succeeding secular or business day after the expiration of the three-month reply time.
If applicant files the reply on Tuesday, then any patent term adjustment for the patent
issuing from the application would be reduced under
37 CFR
1.704(b)
by one day.
A reply under
37 CFR 1.116
to an Office action
containing a final rejection must cancel or appeal each rejected claim and comply with
all patentability requirements and objections as to form for each allowed claim. See
37 CFR
1.113(c)
. “
Section 1.703(a)
is in fact entirely
consistent with our and the Patent Office's reading of ‘reply’ in
§
1.704(b)
d be reduced under
37 CFR
1.704(b)
by one day.
A reply under
37 CFR 1.116
to an Office action
containing a final rejection must cancel or appeal each rejected claim and comply with
all patentability requirements and objections as to form for each allowed claim. See
37 CFR
1.113(c)
. “
Section 1.703(a)
is in fact entirely
consistent with our and the Patent Office's reading of ‘reply’ in
§
1.704(b)
. The specific reference to a ‘reply in compliance with
§
1.113(c)
’ in
§ 1.703(a)
reflects the Patent
Office's recognition that Office actions in response to replies to final Office actions
and Office actions in response to replies to non-final Office actions represent two
different situations, both of which may separately give rise to agency delay.”
Intra-Cellular Therapies, Inc. v. Iancu,
938 F.3d 1371, 1384, 2019
USPQ2d 350004 (Fed. Cir. 2019). Accordingly, an applicant can only stop the three-month
clock under
37 CFR 1.704(b)
by filing a
compliant reply under
37 CFR 1.113(c)
, appealing the final rejection, or filing a
request for continued examination. For example, the Office mailed a final rejection on
October 10, 2017. On January 8, 2018, applicant filed a reply under
37 CFR 1.116
that
would result in the allowance of only some of the pending claims. In other words, the
remaining claims would still be in the rejected status even if the January 8, 2018
amendment was entered into the record. On January 17, 2018, the Office mailed an
advisory action that informed applicant that the January 8, 2018 amendment failed to
overcome all of the rejections of record. On February 5, 2018, applicant filed a Notice
of Appeal. In this case, applicant would have a PTA reduction under
37 CFR
1.704(b)
for the period beginning on January 11, 2018 (the day
after three months from the mailing date of the final rejection) and ending on February
5, 2018 (the day the notice of appeal was filed).
III
uary 8, 2018 amendment failed to
overcome all of the rejections of record. On February 5, 2018, applicant filed a Notice
of Appeal. In this case, applicant would have a PTA reduction under
37 CFR
1.704(b)
for the period beginning on January 11, 2018 (the day
after three months from the mailing date of the final rejection) and ending on February
5, 2018 (the day the notice of appeal was filed).
III.
37 CFR 1.704(c)
37 CFR
1.704(c)
establishes further circumstances that constitute a
failure of an applicant to engage in reasonable efforts to conclude processing or
examination of an application.
37 CFR 1.704(c)(1) through (c)(13)
set forth actions or inactions by an applicant that interfere with the Office’s ability
to process or examine an application (and, thus, are circumstances that constitute a
failure of an applicant to engage in reasonable efforts to conclude processing or
examination of an application), as well as the period by which a period of adjustment
set forth in
37 CFR
1.703
shall be reduced if an applicant engages in any of the
enumerated actions or inactions.
37 CFR 1.704(c)
requires that an
applicant refrain from engaging in actions or inactions that prevent or interfere with
the Office’s ability to process or examine an application. An applicant who is engaging
in actions or inactions that prevent or interfere with the Office’s ability to process
or examine an application cannot reasonably be characterized as “engag[ing] in
reasonable efforts to conclude processing or examination of an application”
(
35 U.S.C.
154(b)(2)(C)(i)
). A reduction of patent term adjustment under
35 U.S.C.
154(b)(2)(C)
must be equal to the period of time during which the
applicant failed to engage in reasonable efforts to conclude prosecution of the
application.
Supernus Pharm., Inc. v. Iancu,
913 F.3d 1351, 129
USPQ2d 1240 (Fed. Cir. 2019).
37 CFR 1.704(c)(1)
through 1.704(c)(14)
address situations that occur with sufficient
frequency to warrant being specifically provided for in the rules of practice
(b)(2)(C)
must be equal to the period of time during which the
applicant failed to engage in reasonable efforts to conclude prosecution of the
application.
Supernus Pharm., Inc. v. Iancu,
913 F.3d 1351, 129
USPQ2d 1240 (Fed. Cir. 2019).
37 CFR 1.704(c)(1)
through 1.704(c)(14)
address situations that occur with sufficient
frequency to warrant being specifically provided for in the rules of practice. These
situations do not represent an exhaustive list of actions or inactions that interfere
with the Office’s ability to process or examine an application, since there are a myriad
of actions or inactions that occur infrequently but will interfere with the Office’s
ability to process or examine an application (e.g., applicant files and persists in
requesting reconsideration of a meritless petition under
37 CFR 1.10
;
parties to an interference obtain an extension for purposes of settlement negotiations
which do not result in settlement of the interference; and when the scope of the
broadest claim in the application at the time an application is placed in condition for
allowance is substantially the same as suggested or allowed by the examiner more than
six months earlier than the date the application was placed in condition for allowance).
Thus, the actions or inactions set forth in
37 CFR 1.704(c)
are exemplary
circumstances that constitute a failure of an applicant to engage in reasonable efforts
to conclude processing or examination of an application. The Office may also reduce a
period of adjustment provided in
37 CFR 1.703
on the basis of conduct
that interferes with the Office’s ability to process or examine an application under the
authority provided in
35 U.S.C. 154(b)(2)(C)(iii)
, even if such conduct is not
specifically addressed in
37 CFR 1.704(c)
to engage in reasonable efforts
to conclude processing or examination of an application. The Office may also reduce a
period of adjustment provided in
37 CFR 1.703
on the basis of conduct
that interferes with the Office’s ability to process or examine an application under the
authority provided in
35 U.S.C. 154(b)(2)(C)(iii)
, even if such conduct is not
specifically addressed in
37 CFR 1.704(c)
.
Effective for applications in which a notice of allowance
was mailed on or after July 16, 2020,
37 CFR 1.704(c)(2), (c)(3), (c)(6), (c)(9), and (c)(10)
were substantively amended in the final rule
Patent Term
Adjustment Reductions in View of the Federal Circuit Decision in Supernus Pharm.,
Inc. v. Iancu,
85 FR 36335 (June 16, 2020). These paragraphs, as amended,
were revised to state the period of reduction is equal to “the period from the beginning
to the end of the applicant’s failure to engage in reasonable efforts to conclude
prosecution” and that the reduction cannot exceed the period of time during which an
applicant failed to engage in reasonable efforts.
Supernus Pharm., Inc. v.
Iancu,
913 F.3d 1351, 1359, 129 USPQ2d 1240 (Fed. Cir. 2019). The Office
will decide any timely request for reconsideration in compliance with
37 CFR
1.705(b)
of a patent term adjustment determination in applications
or patents eligible for patent term adjustment in which a notice of allowance mailed
prior to July 16, 2020, consistent with the changes in the final rule, as discussed
below, if requested by the patentee.
A.
37 CFR 1.704(c)(1) –
Suspension of Action
37 CFR
1.704(c)(1)
establishes suspension of action under
37 CFR
1.103
at the applicant’s request as a circumstance that
constitutes a failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. Obviously, if action is suspended at the
applicant’s request, the Office is precluded from processing or examining the
application as a result of an action by the applicant
stablishes suspension of action under
37 CFR
1.103
at the applicant’s request as a circumstance that
constitutes a failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. Obviously, if action is suspended at the
applicant’s request, the Office is precluded from processing or examining the
application as a result of an action by the applicant.
37 CFR
1.704(c)(1)
also provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the date a request for suspension of action
under
37 CFR
1.103
was filed and ending on the date of the termination of
the suspension.
B.
37 CFR 1.704(c)(2) – Deferral
of Issuance
37 CFR
1.704(c)(2)
establishes deferral of issuance of a patent under
37 CFR
1.314
as a circumstance that constitutes a failure of an
applicant to engage in reasonable efforts to conclude processing or examination of an
application. Obviously, if issuance of the patent is deferred under
37 CFR 1.314
,
the Office is precluded from issuing the application as a result of an action by the
applicant. When a petition under
37 CFR 1.314
is granted, the
petition decision generally states that the application will be held for a period of
a month to await the filing of a paper. At the end of the period, the application is
returned to the issue process without a further communication from the Office to the
applicant. For applications in which a notice of allowance was mailed on or after
July 16, 2020,
37
CFR 1.704(c)(2)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the date a request for deferral of issuance
of a patent under
37 CFR 1.314
was filed and ending on the earlier of the date a
request to terminate the deferral was filed or the date the patent was issued
was mailed on or after
July 16, 2020,
37
CFR 1.704(c)(2)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the date a request for deferral of issuance
of a patent under
37 CFR 1.314
was filed and ending on the earlier of the date a
request to terminate the deferral was filed or the date the patent was issued. To
request termination of the deferral, the applicant should file a petition under
37 CFR
1.182
to request termination of the deferral of the issuance of
the patent, and therefore, end the period of reduction under
37 CFR
1.704(c)(2)
prior to the issuance of the patent. For all other
applications, the period of adjustment shall be reduced by the number of days, if
any, beginning on the date a request for deferral of issuance of a patent under
37 CFR
1.314
was filed and ending on the issue date of the patent.
C.
37 CFR 1.704(c)(3) –
Abandonment or Late Payment of the Issue Fee
37 CFR
1.704(c)(3)
establishes abandonment of the application or late
payment of the issue fee as a circumstance that constitutes a failure of an applicant
to engage in reasonable efforts to conclude processing or examination of an
application. Obviously, if the application is abandoned (either by failure to
prosecute or late payment of the issue fee), the Office is precluded from processing
or examining the application as a result of an action or inaction by the applicant.
For applications in which a notice of allowance was mailed on or after July 16, 2020,
37 CFR
1.704(c)(3)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the date of abandonment or the day after the
date the issue fee was due, and ending on the date the grantable petition to revive
the application or accept late payment of the issue fee was filed
lowance was mailed on or after July 16, 2020,
37 CFR
1.704(c)(3)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the date of abandonment or the day after the
date the issue fee was due, and ending on the date the grantable petition to revive
the application or accept late payment of the issue fee was filed. For all other
applications, the period of adjustment shall be reduced by the number of days, if
any, beginning on the date of abandonment or the date after the date the issue fee
was due, and ending on the earlier of: (1) the date of mailing of the decision
reviving the application or accepting late payment of the issue fee; or (2) the date
that is four months after the date the grantable petition to revive the application
or accept late payment of the issue fee was filed. The phrase “earlier of… [t]he date
that is four months after the date the grantable petition to revive the application
or accept late payment of the issue fee was filed” is to place a cap (measured from
the filing date of the grantable petition) on the reduction if the Office does not
act on (grant) the grantable petition to revive within four months of the date it was
filed.
D.
37 CFR 1.704(c)(4) – Petition
to Withdraw Holding of Abandonment or Revive
Application
37 CFR
1.704(c)(4)
establishes failure to file a petition to withdraw
a holding of abandonment or to revive an application within two months from the date
of mailing of a notice of abandonment as a circumstance that constitutes a failure of
an applicant to engage in reasonable efforts to conclude processing or examination of
an application
n
to Withdraw Holding of Abandonment or Revive
Application
37 CFR
1.704(c)(4)
establishes failure to file a petition to withdraw
a holding of abandonment or to revive an application within two months from the date
of mailing of a notice of abandonment as a circumstance that constitutes a failure of
an applicant to engage in reasonable efforts to conclude processing or examination of
an application. Any applicant who considers an application to have been improperly
held abandoned (the reduction in
37 CFR 1.704(c)(3)
is applicable
to the revival of an application properly held abandoned) is expected to file a
petition to withdraw the holding of abandonment (or to revive the application) within
two months from the date of mailing of a notice of abandonment. See
MPEP §
711.03(c)
, subsection I.
37 CFR
1.704(c)(4)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the day after the date two months from the
date of mailing of a notice of abandonment and ending on the date a petition to
withdraw the holding of abandonment or to revive the application was filed.
If a petition to withdraw the holding of abandonment is granted,
the Office’s OPSG system records should be checked to ensure that the correct term
adjustment determination is made. Applicants are encouraged to check the Office’s
OPSG system records for their applications through the USPTO patent electronic filing
system (see
MPEP §
2733
). For example, if applicant shows in the petition that
a reply was filed in the Office on March 2, but the March 2 reply was never matched
with the file, when the petition to withdraw the holding of abandonment is granted,
the receipt of a paper on March 2 should be recorded on the Office’s OPSG system
records. If the papers or dates are recorded incorrectly, applicant should contact
the examiner, the examiner’s supervisor or the Technology Center customer service
representative to have the entry corrected
h 2 reply was never matched
with the file, when the petition to withdraw the holding of abandonment is granted,
the receipt of a paper on March 2 should be recorded on the Office’s OPSG system
records. If the papers or dates are recorded incorrectly, applicant should contact
the examiner, the examiner’s supervisor or the Technology Center customer service
representative to have the entry corrected. If an applicant receives a Notice of
Abandonment and does not request that the holding of abandonment be withdrawn within
two months of the date of mailing of the notice, the applicant has failed to engage
in reasonable efforts to conclude prosecution and any patent term adjustment will be
reduced pursuant to
37 CFR 1.704(c)(4)
.
E.
37 CFR 1.704(c)(5) –
Conversion of a Provisional Application
37 CFR
1.704(c)(5)
establishes conversion of a provisional application
under
35 U.S.C.
111(b)
to a nonprovisional application under
35 U.S.C.
111(a)
(pursuant to
35 U.S.C. 111(b)(5)
; (see
MPEP
§ 201.04
)) as a circumstance that constitutes a failure of
an applicant to engage in reasonable efforts to conclude processing or examination of
an application. Conversion of a provisional application to a nonprovisional
application will require the Office to reprocess the application (as a nonprovisional
application) up to one year after the filing date that will be accorded to such
nonprovisional application as a result of an action by the applicant.
37 CFR
1.704(c)(5)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the date the application was filed under
35 U.S.C.
111(b)
and ending on the date a request in compliance with
37 CFR
1.53(c)(3)
to convert the provisional application into a
nonprovisional application was filed.
F
n action by the applicant.
37 CFR
1.704(c)(5)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the date the application was filed under
35 U.S.C.
111(b)
and ending on the date a request in compliance with
37 CFR
1.53(c)(3)
to convert the provisional application into a
nonprovisional application was filed.
F.
37 CFR 1.704(c)(6) –
Submission of Preliminary Amendment or Paper
37 CFR
1.704(c)(6)
establishes submission of a preliminary amendment
or other preliminary paper less than one month before the mailing of an Office action
under
35 U.S.C.
132
or a notice of allowance under
35 U.S.C. 151
that requires the mailing of a supplemental Office action or notice of allowance as a
circumstance that constitutes a failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an application. If the submission of
a preliminary amendment or other paper requires the Office to issue a supplemental
Office action or notice of allowance, the submission of that preliminary amendment or
other paper has interfered with the processing and examination of an application. For
applications in which a notice of allowance was mailed on or after July 16, 2020,
37 CFR
1.704(c)(6)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the day after the date that is eight months
from either the date on which the application was filed under
35 U.S.C.
111(a)
or the date of commencement of the national stage under
35 U.S.C. 371(b)
or (f)
in an international application and ending on the date
the preliminary amendment or other preliminary paper was filed
th in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the day after the date that is eight months
from either the date on which the application was filed under
35 U.S.C.
111(a)
or the date of commencement of the national stage under
35 U.S.C. 371(b)
or (f)
in an international application and ending on the date
the preliminary amendment or other preliminary paper was filed. For all other
applications, the period of adjustment shall be reduced by the lesser of the number
of days, if any, beginning on the day after the mailing date of the original Office
action or notice of allowance and ending on the date of mailing of the supplemental
Office action or notice of allowance or four months. The phrase “lesser of… or [f]our
months” is to provide a four-month cap for a reduction under
37 CFR
1.704(c)(6)
if the Office takes longer than four months to
issue a supplemental Office action or notice of allowance.
G.
37 CFR 1.704(c)(7) –
Submission of a Reply with an Omission
37 CFR
1.704(c)(7)
establishes submission of a reply having an
omission (e.g.,
37
CFR 1.135(c)
) as a circumstance that constitutes a failure of
an applicant to engage in reasonable efforts to conclude processing or examination of
an application. Submitting a reply having an omission requires the Office to issue an
action under
37 CFR
1.135(c)
and await and process the applicant’s reply to the
action under
37 CFR
1.135(c)
before the initial reply (as corrected) can be treated
on its merits. In addition,
37 CFR 1.704(c)(7)
provides that
in such a case the period of adjustment set forth in
37 CFR 1.703
shall be reduced by the number of days, if any, beginning on the day after the date
the reply having an omission was filed and ending on the date that the reply or other
paper correcting the omission was filed
1.135(c)
before the initial reply (as corrected) can be treated
on its merits. In addition,
37 CFR 1.704(c)(7)
provides that
in such a case the period of adjustment set forth in
37 CFR 1.703
shall be reduced by the number of days, if any, beginning on the day after the date
the reply having an omission was filed and ending on the date that the reply or other
paper correcting the omission was filed. The reference to
37 CFR 1.135(c)
is parenthetical because
37 CFR 1.704(c)(7)
is not limited
to Office actions under
37 CFR 1.135(c)
but applies also
when the Office issues any action or notice indicating that a reply has an omission
which must be corrected: for example, (1) a decision on a petition under
37 CFR
1.47
dismissing the petition as lacking an item necessary to
grant the petition; or (2) a notice indicating that the computer readable sequence
listing submitted in an application filed on or after July 1, 2022, in reply to a
previous notice relating to the requirements for patent applications containing
nucleotide and/or amino acid sequence disclosures, does not comply with
37 CFR
1.831
et seq.
The filing of a non-compliant appeal brief, however, will
not be deemed an omission under
37 CFR 1.704(c)(7)
if the notice
of appeal was filed on or after September 17, 2012. This situation is covered under
37 CFR 1.704(c)(11)
.
H.
37 CFR 1.704(c)(8) –
Submission of a Supplemental Reply or Paper
37 CFR
1.704(c)(8)
establishes submission of a supplemental reply or
other paper after a reply has been filed as a circumstance that constitutes a failure
of an applicant to engage in reasonable efforts to conclude processing or examination
of an application. The submission of a supplemental reply or other paper (e.g., an
information disclosure statement (IDS) or petition) after an initial reply was filed
requires the Office to restart consideration of the initial reply in view of the
supplemental reply or other paper, which will result in a delay in the Office’s
response to the initial reply
rts to conclude processing or examination
of an application. The submission of a supplemental reply or other paper (e.g., an
information disclosure statement (IDS) or petition) after an initial reply was filed
requires the Office to restart consideration of the initial reply in view of the
supplemental reply or other paper, which will result in a delay in the Office’s
response to the initial reply. The submission of an information disclosure statement
that is filed after a reply to a restriction requirement (and prior to the subsequent
Office action and without a safe harbor statement under
37 CFR
1.704(d)
) is an applicant delay. See
Gilead Sciences
Inc. v. Lee,
778 F.3d 1341, 113 USPQ2d 1837 (Fed. Cir. 2015). Similarly,
the filing of an information disclosure statement after a request for continued
examination (RCE) but prior to a subsequent Office action is deemed an applicant
delay under
37 CFR 1.704(c)(8)
.
37 CFR
1.704(c)(8)
does not apply to a supplemental reply or other
paper that was expressly requested by the examiner. In addition, the Office cannot
reduce patent term adjustment in the rare situation for “a period of time during
which there is no identifiable effort in which the applicant could have engaged to
conclude prosecution.”
Supernus Pharm., Inc. v. Iancu,
913 F.3d
1351, 1359, 129 USPQ2d 1240 (Fed. Cir. 2019) (the court found applicant delay for the
period between the filing of the RCE and the issuance of European Patent Office
communication, which was the basis for the later-filed Information Disclosure
Statement, is not a permissible reduction in patent term adjustment because there is
no identifiable effort in which the applicant could have engaged to conclude
prosecution during this time period.)
) (the court found applicant delay for the
period between the filing of the RCE and the issuance of European Patent Office
communication, which was the basis for the later-filed Information Disclosure
Statement, is not a permissible reduction in patent term adjustment because there is
no identifiable effort in which the applicant could have engaged to conclude
prosecution during this time period.). If applicant believes that the Office has
reduced the patent term adjustment for a period of time during which there is no
identifiable effort in which the applicant could have engaged to conclude
prosecution, a timely request for reconsideration in compliance with
37
CFR 1.705(b)
may be filed to request correction of the patent
term adjustment determination.
If an amendment is requested by an examiner, the
examiner will have the paper processed so that it is included as part of an interview
summary or examiner’s amendment and not a separate paper for One Patent Service
Gateway (OPSG) to flag in the patent term adjustment calculation.
37 CFR
1.704(c)(8)
also provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the day after the date the initial reply was
filed and ending on the date that the supplemental reply or such other paper was
filed.
Applicant’s submission of an information disclosure
statement pursuant to
37 CFR 1.97(c)
or an amendment
under
37 CFR
41.33
after a notice of appeal has been filed but prior to
jurisdiction passing to the Patent Trial and Appeal Board is deemed an applicant
delay under
37 CFR 1.704(c)(8)
. Under
37 CFR
1.97(c)
, an applicant who submits an information disclosure
statement meeting the requirements of
37 CFR 1.97
and
1.98
will have
such submission considered by the examiner if it is accompanied by a statement under
37 CFR
1.97(e)
and the fee under
37 CFR
1.17(p)
. Moreover, the Office may admit an amendment after
notice of appeal if it meets the applicable requirements in
37 CFR 41.33(a)
and
7 CFR
1.97(c)
, an applicant who submits an information disclosure
statement meeting the requirements of
37 CFR 1.97
and
1.98
will have
such submission considered by the examiner if it is accompanied by a statement under
37 CFR
1.97(e)
and the fee under
37 CFR
1.17(p)
. Moreover, the Office may admit an amendment after
notice of appeal if it meets the applicable requirements in
37 CFR 41.33(a)
and
(b)
for consideration. Because the treatment of these papers
may delay the Board taking jurisdiction of the application, the Office will treat
such papers similarly to how the Office treats a supplemental reply under this
provision, in that the papers will be considered as a circumstance that constitutes a
failure of an applicant to engage in reasonable efforts to conclude processing or
examination of an application.
I.
37 CFR 1.704(c)(9) –
Submission of an Amendment or Paper after Board or Court
Decision
37 CFR
1.704(c)(9)
establishes submission of an amendment or other
paper (other than a statement under
37 CFR 41.50(c)
) in an
application after a decision by the Patent Trial and Appeal Board (other than a
decision containing a rejection under
37 CFR 41.50(b)
) or a federal
court less than one month before the mailing of an Office action under
35 U.S.C.
132
or notice of allowance under
35 U.S.C. 151
,
that requires the mailing of a supplemental Office action or supplemental notice of
allowance as a circumstance that constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an application. The
submission of an amendment or other paper (e.g., IDS or petition) in an application
after a Board decision or court decision requires the Office to restart consideration
of the application in view of the amendment or other paper, which will result in a
delay in the Office’s taking action on the application
to engage in
reasonable efforts to conclude processing or examination of an application. The
submission of an amendment or other paper (e.g., IDS or petition) in an application
after a Board decision or court decision requires the Office to restart consideration
of the application in view of the amendment or other paper, which will result in a
delay in the Office’s taking action on the application. For applications in which a
notice of allowance was mailed on or after July 16, 2020,
37 CFR
1.704(c)(9)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the day after the date of the decision by
the Patent Trial and Appeal Board or by a federal court and ending on the date the
amendment or other paper was filed. For all other applications, the period of
adjustment shall be reduced by the lesser of the number of days, if any, beginning on
the day after the mailing date of the original Office action or notice of allowance
and ending on the mailing date of the supplemental Office action or notice of
allowance or four months. The phrase “lesser of…or [f]our months” is to provide a
four-month cap for a reduction under
37 CFR 1.704(c)(9)
if the Office
takes longer than four months to issue a supplemental Office action or notice of
allowance. If the amendment is requested by an examiner, the examiner will have the
paper processed so that it is included as part of an interview summary or examiner’s
amendment and not a separate paper for OPSG to flag in the patent term adjustment
calculation.
J
or a reduction under
37 CFR 1.704(c)(9)
if the Office
takes longer than four months to issue a supplemental Office action or notice of
allowance. If the amendment is requested by an examiner, the examiner will have the
paper processed so that it is included as part of an interview summary or examiner’s
amendment and not a separate paper for OPSG to flag in the patent term adjustment
calculation.
J.
37 CFR 1.704(c)(10) –
Submission of an Amendment or Paper after Notice of
Allowance
37 CFR
1.704(c)(10)
establishes submission of an amendment under
37 CFR
1.312
or other paper, other than a request for continued
examination in compliance with
37 CFR 1.114
, after a notice of
allowance has been given or mailed as a circumstance that constitutes a failure of an
applicant to engage in reasonable efforts to conclude processing or examination of an
application. Effective March 10, 2015,
37 CFR
1.704(c)(10)
was amended to change “other paper” to “other
paper, other than a request for continued examination in compliance with
§
1.114
,” to clarify that the filing of a request for continued
examination under
35 U.S.C. 132(b)
in compliance with
37 CFR 1.114
is
treated under
37 CFR 1.704(c)(12)
rather than
37 CFR
1.704(c)(10)
. See the final rule
Changes to Patent
Term Adjustment in view of the Federal Circuit Decision in Novartis v.
Lee,
80 FR 1346 (January 9, 2015). Prior to March 10, 2015, the
submission of a request for continued examination after the mailing date of a notice
of allowance was not considered an applicant delay under
37 CFR
1.704
. The submission of amendments (or other papers) after an
application is allowed may cause substantial interference with the patent issue
process. Certain papers filed after allowance are not considered to be a failure to
engage in reasonable efforts to conclude processing or examination of an application
ailing date of a notice
of allowance was not considered an applicant delay under
37 CFR
1.704
. The submission of amendments (or other papers) after an
application is allowed may cause substantial interference with the patent issue
process. Certain papers filed after allowance are not considered to be a failure to
engage in reasonable efforts to conclude processing or examination of an application.
See
Clarification of
37 CFR 1.704(c)(10)
–
Reduction of Patent Term Adjustment for Certain Types of Papers Filed After a
Notice of Allowance has been Mailed,
1247 OG 111 (June 26, 2001). For
applications in which a notice of allowance was mailed on or after July 16, 2020,
37 CFR
1.704(c)(10)
provides that in such a case the period of
adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the day after the date of mailing of the
notice of allowance under
35 U.S.C. 151
and ending on the
date the amendment under
37 CFR 1.312
or other paper was
filed, except for an amendment under
37 CFR 1.312
or other paper that
was expressly requested by the Office as further discussed below. For all other
applications, the period of adjustment shall be reduced by the lesser of: (1) the
number of days, if any, beginning on the date the amendment under
37 CFR 1.312
or
other paper was filed and ending on the mailing date of the Office action or notice
in response to the amendment under
37 CFR 1.312
or such other paper;
or (2) four months. The phrase “lesser of …or [f]our months” is to provide a
four-month cap for a reduction under
37 CFR 1.704(c)(10)
if the Office
takes longer than four months to issue an Office action or notice in response to the
amendment under
37
CFR 1.312
or other paper. If the Office does not mail a
response to the paper that triggered the delay under this provision and the patent
issues in less than four months, then the applicant delay under this provision will
end on the date of the patent issuance
37 CFR 1.704(c)(10)
if the Office
takes longer than four months to issue an Office action or notice in response to the
amendment under
37
CFR 1.312
or other paper. If the Office does not mail a
response to the paper that triggered the delay under this provision and the patent
issues in less than four months, then the applicant delay under this provision will
end on the date of the patent issuance. The Office will treat the issuance of the
patent as the response to the paper that triggered the delay.
For any application having a notice of allowance
mailed on or after July 16, 2020,
37 CFR 1.704(c)(10)
is also
amended to exclude ‘‘an amendment under
§ 1.312
or other paper expressly
requested by the Office’’ from the amendments under
37 CFR 1.312
or
other papers filed after a notice of allowance that will result in a reduction of
patent term adjustment under
37 CFR 1.704(c)(10)
. Thus, an
amendment under
37
CFR 1.312
or other paper not expressly requested by the Office
(i.e., a ‘‘voluntary’’ amendment under
37 CFR 1.312
or other paper)
after the notice of allowance will result in a reduction of patent term adjustment
under
37 CFR 1.704(c)(10)
. An amendment under
37 CFR 1.312
or
other paper going beyond what was requested by the Office (i.e., including material
not expressly requested by the Office in addition to what was requested by the USPTO)
would not be considered “an amendment under
§ 1.312
or other paper expressly
requested by the Office” under
37 CFR 1.704(c)(10)
. In addition,
the phrase ‘‘expressly requested by the Office’’ requires a specific request in an
Office action or notice, or in an Examiner’s Interview Summary (form PTOL– 413/413B),
for the amendment under
37 CFR 1.312
or other paper
to what was requested by the USPTO)
would not be considered “an amendment under
§ 1.312
or other paper expressly
requested by the Office” under
37 CFR 1.704(c)(10)
. In addition,
the phrase ‘‘expressly requested by the Office’’ requires a specific request in an
Office action or notice, or in an Examiner’s Interview Summary (form PTOL– 413/413B),
for the amendment under
37 CFR 1.312
or other paper. For
example, generic language in an Office action or notice, such as a statement in a
notice of allowability containing an examiner’s amendment indicating that if the
changes and/or additions are unacceptable to applicant, an amendment may be filed as
provided by
37 CFR
1.312
(see
MPEP § 1302.04
), is not a basis for
considering an amendment under
37 CFR 1.312
to be ‘‘expressly
requested by the Office’’ within the meaning of
37 CFR
1.704(c)(10)
. Similarly, the provisions of
37 CFR
1.56
,
1.97
and
1.98
are not a
basis for considering an information disclosure statement including information that
has come to the attention of the applicant after a notice of allowance has been given
or mailed to be a paper ‘‘expressly requested by the Office’’ within the meaning of
37
CFR 1.704(c)(10)
. An information disclosure statement in
compliance with
37
CFR 1.97
and
1.98
, however, will not be
considered a failure to engage in reasonable efforts to conclude prosecution of the
application under
37 CFR 1.704(c)(10)
(or
37
CFR 1.704(c)(6), (8), or (9)
) if the information disclosure
statement is accompanied by a statement under
37 CFR
1.704(d)
. Finally, an amendment under
37 CFR 1.312
or
other paper expressly requested by the Office not filed within three months from the
date of mailing of the Office communication notifying the applicant of such request
will result in a reduction of patent term adjustment under
37 CFR
1.704(b)
.
In the final rule
Changes to Patent Term
Adjustment in view of the Federal Circuit Decision in Novartis v. Lee,
80 FR 1346 (January 9, 2015), the Office revised policies regarding
37 CFR
1.704(c)(10)
not filed within three months from the
date of mailing of the Office communication notifying the applicant of such request
will result in a reduction of patent term adjustment under
37 CFR
1.704(b)
.
In the final rule
Changes to Patent Term
Adjustment in view of the Federal Circuit Decision in Novartis v. Lee,
80 FR 1346 (January 9, 2015), the Office revised policies regarding
37 CFR
1.704(c)(10)
. The revised policy does not consider the
submission of a written (or other type of) status inquiry, request for refund, or an
inventor’s oath or declaration to be a failure to engage in reasonable efforts to
conclude processing and examination of the application under
37 CFR
1.704(c)(10)
due to the changes that have been brought about by
the electronic filing and processing of patent applications.
The submission of the following papers after a “Notice
of Allowance” is
not
considered a failure to engage in reasonable
efforts to conclude processing or examination of an application: (1) Fee(s)
Transmittal (PTOL-85B); (2) power of attorney; (3) power to inspect; (4) change of
address; (5) change of status (micro/small/not small entity status); (6) a response
to the examiner’s reasons for allowance or a request to correct an error or omission
in the “Notice of Allowance” or “Notice of Allowability;” (7) status letters; (8)
requests for a refund; (9) an inventor’s oath or declaration; (10) an information
disclosure statement with a statement in compliance with
37 CFR
1.704(d)
; (11) the resubmission by applicant of unlocatable
paper(s) previously filed in the application (
37 CFR 1.251
); (12) a request for
acknowledgment of an information disclosure statement in compliance with
37 CFR
1.97
and
1.98
, provided that the applicant
had requested that the examiner acknowledge the information disclosure statement
prior to the notice of allowance, or the request for acknowledgement was applicant’s
first opportunity to request that the examiner acknowledge the information disclosure
statement; (13) comments on the substance of an i
rmation disclosure statement in compliance with
37 CFR
1.97
and
1.98
, provided that the applicant
had requested that the examiner acknowledge the information disclosure statement
prior to the notice of allowance, or the request for acknowledgement was applicant’s
first opportunity to request that the examiner acknowledge the information disclosure
statement; (13) comments on the substance of an interview where the
applicant-initiated interview resulted in a notice of allowance; and (14) letters
related to government interests (e.g., those between NASA and the Office).
Under
37 CFR 1.704(c)(10)
, papers that
will be
considered a failure to engage in reasonable efforts to
conclude processing or examination of an application include: (1) an amendment under
37 CFR
1.312
; (2) a paper containing a claim for priority or benefit
or request to correct priority or benefit information (e.g., a new or supplemental
application data sheet filed to correct foreign priority or domestic benefit
information); (3) a request for a corrected filing receipt; (4) a certified copy of a
priority document; (5) drawings; (6) a letter related to biologic deposits; (7) a
request to change or correct inventorship; and (8) an information disclosure
statement not accompanied by a statement in compliance with
37 CFR
1.704(d)
.
K.
37 CFR 1.704(c)(11) – Failure
to Timely File an Appeal Brief
Effective for applications in which a notice of appeal
was filed on or after September 17, 2012,
37 CFR
1.704(c)(11)
establishes that failure to file an appeal brief
in compliance with
37 CFR 41.37
within three months from the date on which a
notice of appeal to the Patent Trial and Appeal Board was filed under
35 U.S.C.
134
and
37 CFR 41.31
is a circumstance
that constitutes a failure to engage in reasonable efforts to conclude processing or
examination of the application
September 17, 2012,
37 CFR
1.704(c)(11)
establishes that failure to file an appeal brief
in compliance with
37 CFR 41.37
within three months from the date on which a
notice of appeal to the Patent Trial and Appeal Board was filed under
35 U.S.C.
134
and
37 CFR 41.31
is a circumstance
that constitutes a failure to engage in reasonable efforts to conclude processing or
examination of the application. It is noted that although the appeal brief is due
within two months of the filing of the notice of appeal under
37 CFR 41.37
,
37 CFR 1.704(c)(11)
provides
three months before any patent term adjustment under
37 CFR
1.703
will be reduced for the late submission of an appeal
brief. If applicant files a non-compliant appeal brief and thereafter files a
compliant appeal brief, the period of time from the filing of a non-compliant appeal
brief to the filing of the compliant appeal brief will not be considered a failure to
engage in reasonable efforts to conclude processing or examination of the application
under
37 CFR 1.704(c)(8)
. However, if the compliant appeal brief is
filed more than three months from the date on which the notice of appeal was filed,
the provisions of
37 CFR 1.704(c)(11)
may result in
reduction of any patent term adjustment under
37 CFR
1.703
.
37 CFR
1.704(c)(11)
provides that the period of adjustment set forth
in
37
CFR 1.703
shall be reduced by the number of days, if any,
beginning on the day after the date three months from the date on which the notice of
appeal to the Patent Trial and Appeal Board was filed and ending on the date an
appeal brief in compliance with
37 CFR 41.37
or a request for
continued examination in compliance with
37 CFR 1.114
was filed
ides that the period of adjustment set forth
in
37
CFR 1.703
shall be reduced by the number of days, if any,
beginning on the day after the date three months from the date on which the notice of
appeal to the Patent Trial and Appeal Board was filed and ending on the date an
appeal brief in compliance with
37 CFR 41.37
or a request for
continued examination in compliance with
37 CFR 1.114
was filed.
If the Office reopens prosecution of the application
more than three months after the filing of the notice of appeal but prior to the
submission of a compliant appeal brief, the Office will not deem the period of time
from the day after three months from the filing of the notice of appeal to the date
the Office reopens prosecution to be an applicant delay under
37 CFR
1.704(c)(11)
. In addition, the Office’s reopening of
prosecution after appeal will not be considered as vacating any previous response
that potentially increases patent term adjustment under
35 U.S.C.
154(b)(1)(A)(i)
through
(iv)
. As discussed above, the
change to
37 CFR 1.704(c)(11)
is applicable
to any applications that includes an appeal brief in which the notice of appeal was
filed on or after September 17, 2012.
L.
37 CFR 1.704(c)(12) – Filing
of a Request for Continued Examination after Notice of
Allowance
Effective for applications in which a request for
continued examination was filed on or after March 10, 2015,
37 CFR
1.704(c)(12)
was amended to provide a new provision that
establishes the submission of a request for continued examination under
35 U.S.C.
132(b)
after any notice of allowance under
35 U.S.C. 151
has been mailed as constituting a failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an application, in which case the
period of adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the day after the date of mailing of the
notice of allowance under
35 U.S.C. 151
and ending on the
date the request for continued examination under
35 U.S.C
ng a failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an application, in which case the
period of adjustment set forth in
37 CFR 1.703
shall be reduced by
the number of days, if any, beginning on the day after the date of mailing of the
notice of allowance under
35 U.S.C. 151
and ending on the
date the request for continued examination under
35 U.S.C. 132(b)
was filed. See
the final rule
Changes to Patent Term Adjustment in view of the Federal
Circuit Decision in Novartis v. Lee,
80 FR 1346 (January 9, 2015). This
provision ensures that an applicant does not obtain additional patent term adjustment
under
35 U.S.C.
154(b)(1)(B)
for the time after a notice of allowance has been
mailed as a consequence of delaying issuance of the patent by filing a request for
continued examination under
35 U.S.C. 132(b)
after a notice
of allowance has been mailed. Moreover, the filing of a request for continued
examination after the mailing of a notice of allowance removes the application from
the issue process, prevents the Office from issuing the patent, and requires the
Office to determine if the submission affects the patentability of the application,
which adds to the pendency of the application in which the request for continued
examination is filed (as well as other applications since examination resources must
be diverted from other applications to the application in which the request for
continued examination is filed). “An applicant who is engaging in actions or
inactions that prevent or interfere with the Office’s ability to process or examine
an application cannot reasonably be characterized as ‘engag[ing] in reasonable
efforts to conclude processing or examination of an application’ (
35 U.S.C.
154(b)(2)(C)(i)
).” See
Changes to Implement Patent
Term Adjustment Under Twenty-Year Patent Term,
65 FR at 56379 (response
to comment 17)
ngaging in actions or
inactions that prevent or interfere with the Office’s ability to process or examine
an application cannot reasonably be characterized as ‘engag[ing] in reasonable
efforts to conclude processing or examination of an application’ (
35 U.S.C.
154(b)(2)(C)(i)
).” See
Changes to Implement Patent
Term Adjustment Under Twenty-Year Patent Term,
65 FR at 56379 (response
to comment 17). Therefore, the Office considers it appropriate to expressly define
the filing of a request for continued examination after the mailing of any notice of
allowance as a failure to engage in reasonable efforts to conclude processing or
examination of an application. See
35 U.S.C. 154(b)(2)(C)(iii)
(provides for the Office to prescribe regulations establishing the circumstances that
constitute a failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application).
Nevertheless, the Office considers it appropriate to
permit applicants to submit information cited in a patent office communication in a
counterpart application to the Office without a reduction in patent term adjustment
if an information disclosure statement is submitted to the Office within thirty days
(not three months) of the date the patent office communication was received by an
individual designated in
37 CFR 1.56(c)
. Accordingly,
37
CFR 1.704(d)
was revised to provide that a request for
continued examination in compliance with
37 CFR 1.114
with no submission
other than an information disclosure statement in compliance with
37 CFR 1.97
and
1.98
will not be considered a failure to engage in reasonable
efforts to conclude prosecution (processing or examination) of the application under
37 CFR
1.704(c)(12)
, if the request for continued examination is
accompanied by a statement in compliance with
37 CFR
1.704(d)
iance with
37 CFR 1.114
with no submission
other than an information disclosure statement in compliance with
37 CFR 1.97
and
1.98
will not be considered a failure to engage in reasonable
efforts to conclude prosecution (processing or examination) of the application under
37 CFR
1.704(c)(12)
, if the request for continued examination is
accompanied by a statement in compliance with
37 CFR
1.704(d)
.
Effective for applications in which a request for
continued examination was filed on or after March 10, 2015, if such a request for
continued examination is filed after payment of the issue fee, any patent term
adjustment would be reduced by the number of days in the period starting on the day
after the date of mailing of the notice of allowance and ending on the date the
request for continued examination was filed.
35 U.S.C. 154(b)(1)(A)(iv)
provides that, subject to the limitations under
35 U.S.C. 154(b)(2)
, if the issue
of an original patent is delayed due to the failure of the Office to issue a patent
within four months after the date on which the issue fee was paid under
35 U.S.C.
151
and all outstanding requirements were satisfied, the term
of the patent shall be extended one day for each day after the date on which the
issue fee was paid and all outstanding requirements were satisfied until the patent
is 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
e 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.
Where prosecution in an application is reopened after a notice of allowance (before
or after payment of the issue fee), either by the Office
sua
sponte
or 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 §
2731
. The mailing of a notice of allowance by the Office
subsequent to the reopening of prosecution is the Office’s indication that the
application is (again) in condition to be issued as a patent, and the applicant’s
return of the Issue Fee Transmittal Form (PTOL-85(b)) is the applicant’s indication
or confirmation that the applicant wants any previously paid issue fee to be applied
as the issue fee for the patent. See
MPEP § 1306
. Thus, 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)
amination, 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). Applicants should note that
37 CFR 1.114
does not permit an applicant to file a request for continued examination under
35 U.S.C.
132(b)
after the date the issue fee is paid as a matter of
right. See
37 CFR
1.114(a)(1)
.
Effective March 10, 2015, the provisions in
37 CFR
1.704(c)(12)
and
37 CFR 1.704(c)(13)
were
relabeled as
37 CFR 1.704(c)(13)
and
37 CFR
1.704(c)(14)
, respectively. See the final rule
Changes
to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v.
Lee,
80 FR 1346 (January 9, 2015).
M.
37 CFR 1.704(c)(13) – Failure
to Timely Provide an Examination Ready Application
For applications filed under
35 U.S.C.
111(a)
on or after December 18, 2013 and international patent
applications in which the national stage was commenced under
35 U.S.C. 371
on or after December 18, 2013,
37 CFR 1.704(c)(13)
establishes
that the circumstances that constitute a failure of the applicant to engage in
reasonable efforts to conclude processing or examination of an application also
include the failure to provide an application in condition for examination within
eight months from the date on which the application was filed under
35 U.S.C.
111(a)
or the date of commencement of the national stage under
35 U.S.C. 371(b)
or (f)
in an international application.
Section
1.704(c)(13)
does not require that applications be in condition
for examination on filing (or commencement of national stage in an international
application) in order for an applicant to avoid a reduction of patent term
adjustment
the application was filed under
35 U.S.C.
111(a)
or the date of commencement of the national stage under
35 U.S.C. 371(b)
or (f)
in an international application.
Section
1.704(c)(13)
does not require that applications be in condition
for examination on filing (or commencement of national stage in an international
application) in order for an applicant to avoid a reduction of patent term
adjustment.
37 CFR
1.704(c)(13)
establishes that where there is a failure to
provide an application in condition for examination within eight months from the date
on which the application was filed under
35 U.S.C. 111(a)
or the date of
commencement of the national stage under
35 U.S.C. 371(b) or (f)
in an
international application, the period of adjustment set forth in
37 CFR
1.703
shall be reduced by the number of days, if any, beginning
on the day after the date that is eight months from the date on which the application
was filed under
35 U.S.C. 111(a)
or the date of
commencement of the national stage under
35 U.S.C. 371(b) or (f)
in an
international application and ending on the date the application is in condition for
examination.
N.
37 CFR 1.704(c)(14) –
Prosecution via a Continuing Application
37 CFR
1.704(c)(14)
(which was formerly
37 CFR
1.704(c)(11)
,
(c)(12)
, and
(c)(13)
) establishes further prosecution via a continuing
application as a circumstance that constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an application.
Currently, a continuing application may be used to: (1) obtain further examination of
an invention disclosed and claimed in the prior application (continuation
application); (2) obtain examination (for the first time) of an invention disclosed
but not claimed or not elected for examination in the prior application (divisional
application); or (3) obtain examination of an invention neither disclosed nor claimed
in the prior application (continuation-in-part application). The provisions of
35 U.S.C
sclosed and claimed in the prior application (continuation
application); (2) obtain examination (for the first time) of an invention disclosed
but not claimed or not elected for examination in the prior application (divisional
application); or (3) obtain examination of an invention neither disclosed nor claimed
in the prior application (continuation-in-part application). The provisions of
35 U.S.C.
132(b)
and
37 CFR 1.114
permit an applicant
to obtain further or continued examination of an invention disclosed and claimed in
an application, which renders it unnecessary for an applicant whose application is
eligible for patent term adjustment under
35 U.S.C. 154(b)
to file a
continuing application to obtain further examination of an invention disclosed and
claimed in an application. If an applicant is filing a continuing application to
obtain examination (for the first time) of an invention disclosed but not claimed or
not elected for examination in the prior application or an invention neither
disclosed nor claimed in the prior application, it is not appropriate for that
applicant to obtain any benefit in the continuing application for examination delays
that might have occurred in the prior application. See
Mohsenzadeh v.
Lee,
790 F.3d 1377, 115 USPQ2d 1483 (Fed. Cir. 2015) where the district
court upheld the Office’s position that patent term adjustment does not carry over to
a continuing or divisional application. Thus, the Office has established further
prosecution via a continuing application as a circumstance that constitutes a failure
of an applicant to engage in reasonable efforts to conclude processing or examination
of an application, in that the period of adjustment set forth in
37 CFR 1.703
shall not include any period that is prior to the actual filing date of the
application that resulted in the patent
the Office has established further
prosecution via a continuing application as a circumstance that constitutes a failure
of an applicant to engage in reasonable efforts to conclude processing or examination
of an application, in that the period of adjustment set forth in
37 CFR 1.703
shall not include any period that is prior to the actual filing date of the
application that resulted in the patent. Thus, if the application that resulted in
the patent is a continuing application (including a CPA), the period of adjustment
set forth in
37 CFR
1.703
(if any) will not include any period that is prior to the
actual filing date of the application (in the case of a CPA, the filing date of the
request for a CPA) that resulted in the patent.
A CPA under
37 CFR 1.53(d)
filed on or after
May 29, 2000 and before July 14, 2003 is entitled to the patent term adjustment
provisions of
35
U.S.C. 154(b)
as amended by section 4402 of the American
Inventors Protection Act of 1999 (CPAs can only be filed in design patent
applications on or after July 14, 2003, and design applications are not entitled to
PTA). The period of patent term adjustment set forth in
37 CFR 1.703
(if any), however, will not include any period that is prior to the filing date of
the request for that CPA.
Delays before the filing date of an application are not relevant to
whether an application is entitled to patent term adjustment. Patent term adjustment
will not be reduced by applicant actions or inactions (that amount to a failure to
engage in reasonable efforts to conclude processing or examination of the
application) occurring in a prior (or other) application.
IV.
37 CFR 1.704(d)
37 CFR
1.704(d)
provides that a paper containing only an information
disclosure statement in compliance with
37 CFR 1.97
and
1.98
will not be
considered (result in a reduction) under
37 CFR 1.704(c)(6)
,
1.704(c)(8)
,
1.704(c)(9)
, or
1.704(c)(10)
if it
is accompanied by a statement that each item of information:
of the
application) occurring in a prior (or other) application.
IV.
37 CFR 1.704(d)
37 CFR
1.704(d)
provides that a paper containing only an information
disclosure statement in compliance with
37 CFR 1.97
and
1.98
will not be
considered (result in a reduction) under
37 CFR 1.704(c)(6)
,
1.704(c)(8)
,
1.704(c)(9)
, or
1.704(c)(10)
if it
is accompanied by a statement that each item of information:
(i) was first cited in any communication from a patent
office in a counterpart foreign or international application or from the Office,
and this communication was not received by an individual designated in
37 CFR
1.56(c)
more than thirty days prior to the filing of the
information disclosure statement; or
(ii) is a communication that was issued by a patent
office in a counterpart foreign or international application or by the Office, and
this communication was not received by any individual designated in
37 CFR
1.56(c)
more than thirty days prior to the filing of the
information disclosure statement.
Effective March 10, 2015,
37 CFR
1.704(d)(1)
was amended to also provide that a request for
continued examination in compliance with
37 CFR 1.114
with no submission other than an
information disclosure statement in compliance with
37 CFR 1.97
and
1.98
will not be considered a failure to engage in reasonable
efforts to conclude prosecution (processing or examination) of the application under
37 CFR
1.704(c)(12)
, if the request for continued examination under
35 U.S.C.
132(b)
is accompanied by the statement provided for in
37 CFR
1.704(d)
. See the final rule
Changes to Patent Term
Adjustment in view of the Federal Circuit Decision in Novartis v. Lee,
80
FR 1346 (January 9, 2015)
engage in reasonable
efforts to conclude prosecution (processing or examination) of the application under
37 CFR
1.704(c)(12)
, if the request for continued examination under
35 U.S.C.
132(b)
is accompanied by the statement provided for in
37 CFR
1.704(d)
. See the final rule
Changes to Patent Term
Adjustment in view of the Federal Circuit Decision in Novartis v. Lee,
80
FR 1346 (January 9, 2015). Thus, unless the information disclosure statement is
accompanied by a safe harbor statement in compliance with
37 CFR
1.704(d)
,
37 CFR 1.704
provides for a
reduction of any patent term adjustment if an information disclosure statement (1) is
filed after a notice of allowance or after an initial reply by the applicant; or (2) is
filed as a preliminary paper or paper after a decision by the Board or federal court
that requires the USPTO to issue a supplemental Office action. Similarly, unless the
submission for a request for continued examination after a notice of allowance has been
mailed is solely an information disclosure statement and it is accompanied by a safe
harbor statement in compliance with
37 CFR 1.704(d)
,
37 CFR
1.704
provides for a reduction of any patent term adjustment if a
request for continued examination is filed after the mailing of a notice of
allowance.
37 CFR 1.704(d)(1)
requires that the information disclosure statement “is accompanied by” the safe harbor
statement. In other words, the safe harbor statement must be filed concurrently with
(therefore, on the same date as) the information disclosure statement according to
37 CFR 1.704(d)(1)
.
However, the Office has provided a procedure for applicants to seek a waiver using a
37 CFR
1.183
petition to allow for a late-filed statement under
37 CFR
1.704
re statement “is accompanied by” the safe harbor
statement. In other words, the safe harbor statement must be filed concurrently with
(therefore, on the same date as) the information disclosure statement according to
37 CFR 1.704(d)(1)
.
However, the Office has provided a procedure for applicants to seek a waiver using a
37 CFR
1.183
petition to allow for a late-filed statement under
37 CFR
1.704
. If an applicant submits an information disclosure statement
within the 30-day period set forth in
37 CFR 1.704(d)(1)
but
does not include a statement under
37 CFR 1.704
with the information
disclosure statement (therefore, not filed on the same date), the applicant should
consider filing a request for reconsideration of the patent term adjustment indicated on
the patent (
37 CFR 1.705(b)
), along with a
statement under
37 CFR 1.704(d)
(if not previously
filed) and petition under
37 CFR 1.183
(along with the fee
under
37 CFR
1.17(f)
) requesting that the Office consider the statement under
37 CFR
1.704(d)
when making the patent term adjustment determination.
Applicants should keep in mind that a petition under
37 CFR 1.183
may only be used to
request acceptance of the late-filed statement under
37 CFR
1.704(d)
. Under no circumstances will an information disclosure
statement filed more than 30 days from the applicable communication under
37 CFR 1.704(d)(1)(i)
or
(ii)
be treated as filed within the
“safe harbor” of
37 CFR 1.704(d)
. In addition, the
30-day period in
37 CFR 1.704(d)(1)
is not
extendable. See
37 CFR 1.704(d)(2)
.
In order to aid the Office in recognizing when a
compliant safe harbor statement under
37 CFR 1.704(d)
has been filed with
an information disclosure statement, the Office has created a form PTO/SB/133 “Patent
Term Adjustment Statement under 37 CFR 1.704(d)” for applicant’s use when submitting the
information disclosure statement
iod in
37 CFR 1.704(d)(1)
is not
extendable. See
37 CFR 1.704(d)(2)
.
In order to aid the Office in recognizing when a
compliant safe harbor statement under
37 CFR 1.704(d)
has been filed with
an information disclosure statement, the Office has created a form PTO/SB/133 “Patent
Term Adjustment Statement under 37 CFR 1.704(d)” for applicant’s use when submitting the
information disclosure statement. The Office has also updated the patent term adjustment
computer program to recognize that form PTO/SB/133 has been filed concurrently with
(therefore, on the same date as) the information disclosure statement using document
code PTA.IDS. When form PTO/SB/133 is recognized, the patent term adjustment computer
program will perform the patent term calculation by taking into account that applicant
filed a compliant safe harbor statement under
37 CFR
1.704(d)
.
Use of form PTO/SB/133 was not required for safe harbor
statements filed before July 17, 2023. However, safe harbor statements under
37 CFR
1.704(d)
filed on or after July 17, 2023, must be submitted on
form PTO/SB/133 using the document code PTA.IDS. See
37 CFR
1.704(d)(3)
. The form is available on the USPTO’s website at
(
www.uspto.gov/PatentForms
) and is reproduced below at the end of
this section. The Office of Management and Budget (OMB) has determined that, under 5 CFR
1320.3(h), form PTO/SB/133 does not collect “information” within the meaning of the
Paperwork Reduction Act of 1995.
While the Office encourages the filing of correspondence
via the USPTO patent electronic filing system, the inclusion of document code PTA.IDS on
the form PTO/SB/133 satisfies the “using the appropriate document code (PTA.IDS)”
requirement of
37 CFR 1.704(d)(3)
for statements
under
37
CFR 1.704(d)
not submitted via the USPTO patent electronic filing
system. Applicants may no longer use the document code PTA.IDS, which is specific to
form PTO/SB/133, on or after July 17, 2023, unless they are using form PTO/SB/133
of document code PTA.IDS on
the form PTO/SB/133 satisfies the “using the appropriate document code (PTA.IDS)”
requirement of
37 CFR 1.704(d)(3)
for statements
under
37
CFR 1.704(d)
not submitted via the USPTO patent electronic filing
system. Applicants may no longer use the document code PTA.IDS, which is specific to
form PTO/SB/133, on or after July 17, 2023, unless they are using form PTO/SB/133.
Applicants filing a statement under
37 CFR 1.704(d)
on or after July 17,
2023, without form PTO/SB/133 may only use document code IDS for submission of an
information disclosure statement. If a statement under
37 CFR
1.704(d)
is not filed using form PTO/SB/133 or does not use
document code PTA.IDS, the application will be treated as if no safe harbor statement
under
37
CFR 1.704(d)
had been filed unless a request for reconsideration
of patent term adjustment, in compliance with
37 CFR
1.705(b)
, is filed establishing that the information disclosure
statement was accompanied by a safe harbor statement.
Applicants who submit form PTO/SB/133 with an
information disclosure statement and use document code PTA.IDS will be considered to be
making a proper safe harbor statement, and the filing will be reflected in the file
record. Applicants may not alter the pre-printed text of form PTO/SB/133. The
presentation to the Office (whether by signing, filing, submitting, or later advocating)
of form PTO/SB/133, whether by a practitioner or non-practitioner, constitutes a
certification under
37
CFR 11.18(b)
that the existing text and any certification
statements on the form have not been altered. See
37 CFR
1.704(d)(3)
. Also, the use of document code PTA.IDS on or after
July 17, 2023, which is specifically for form PTO/SB/133, is a representation that the
applicant is filing form PTO/SB/133 with no alterations to the text of the form
on-practitioner, constitutes a
certification under
37
CFR 11.18(b)
that the existing text and any certification
statements on the form have not been altered. See
37 CFR
1.704(d)(3)
. Also, the use of document code PTA.IDS on or after
July 17, 2023, which is specifically for form PTO/SB/133, is a representation that the
applicant is filing form PTO/SB/133 with no alterations to the text of the form. As a
result of using the form PTO/SB/133 and document code PTA.IDS with a submission of an
information disclosure statement, the Office’s computer program will take the safe
harbor statement into account when patent term adjustment is calculated, thereby
eliminating the need to file a request for reconsideration of patent term adjustment
under
37
CFR 1.705(b)
for this matter.
The provision in
37 CFR
1.704(d)
will permit applicants to submit information first cited
in any communication from a patent office in a counterpart foreign or international
application or from the Office in another application without a reduction in patent term
adjustment if an information disclosure statement is promptly (within thirty days of
receipt of the first communication) submitted to the Office. Specifically, information
first cited in any communication from a foreign patent office or this Office and
received by an individual designated in
37 CFR 1.56(c)
more than thirty days
before the filing of the information disclosure statement is not entitled to the safe
harbor provision, even if the same information is once again cited by another foreign
patent office or this Office within thirty days prior to the filing of the information
disclosure statement in the Office. This is because the applicant was aware of the
information more than thirty days before the filing of the information disclosure
statement, yet did not submit that information. The term “any” in “any communication”
was used in
37 CFR 1.704(d)(1)(i)
to make the
distinction clear
atent office or this Office within thirty days prior to the filing of the information
disclosure statement in the Office. This is because the applicant was aware of the
information more than thirty days before the filing of the information disclosure
statement, yet did not submit that information. The term “any” in “any communication”
was used in
37 CFR 1.704(d)(1)(i)
to make the
distinction clear. This provision also permits an applicant to submit communications
that were issued by a patent office in a counterpart foreign or international
application or by the Office that were not received by any individual designated in
37 CFR
1.56(c)
more than thirty days prior to the filing of the
information disclosure statement to avoid a reduction in any patent term adjustment. See
37 CFR 1.704(d)(1)(ii)
.
Compliance with the statement requirement of
37 CFR
1.704(d)
does not substitute for compliance with any relevant
requirement of
37 CFR
1.97
or
1.98
.
37 CFR
1.704(d)(2)
also provides that this thirty-day period is not
extendable.
The determination of when the thirty day period in
37 CFR 1.704(d)(1)(i)
or
(ii)
begins to run is dependent on
the role of each entity involved in the prosecution of the U.S. and foreign
applications, and the role that each plays (if any) vis-à-vis the application being
examined by the USPTO. The inventors, the assignee and the U.S. patent counsel are all
individuals designated in
37 CFR 1.56(c)
. The issue is whether
the foreign patent counsel is also an individual designated in
37 CFR
1.56(c)
.
37 CFR
1.56(c)
provides that individuals associated with the filing or
prosecution of a patent application within the meaning of
37 CFR 1.56
are:
1. Each inventor named in the application;
2. Each attorney or agent who prepares or prosecutes
the application; and
3. Every other person who is substantively involved in
the preparation or prosecution of the application and who is associated with the
inventor, with the assignee or with anyone to whom there is an obligation to
assign the application
lication within the meaning of
37 CFR 1.56
are:
1. Each inventor named in the application;
2. Each attorney or agent who prepares or prosecutes
the application; and
3. Every other person who is substantively involved in
the preparation or prosecution of the application and who is associated with the
inventor, with the assignee or with anyone to whom there is an obligation to
assign the application.
Based on these elements of
37 CFR
1.56(c)
, the following three examples provide guidance in regard to
the discussed situations.
Example A:
An applicant based in Chicago, Illinois, directs U.S.
counsel to prepare, file and prosecute an application in the United States Patent and
Trademark Office (USPTO). The U.S. counsel subsequently sends the application to
foreign counsel for filing and prosecution in foreign jurisdictions. The U.S. counsel
directs foreign counsel to provide copies of all communications from the foreign
office (by fax or overnight mail) within seven days of receipt thereof, and expressly
reserves all decision-making authority as to prosecution of the U.S. and foreign
applications.
On January 5, 2002, a foreign counsel in Germany
receives a communication from the European Patent Office (EPO) that includes a list
of citations of patents. On January 8, the foreign counsel, pursuant to the standing
instructions of U.S. counsel, sends by overnight mail, a copy of the communication
from the EPO. The document is received by U.S. counsel on January 12, 2002. On
January 30, the U.S. counsel reviews the document and discovers a previously uncited
patent. A copy of the patent and an IDS is then prepared and filed by the U.S.
counsel, which was received at the USPTO on February 11, 2002.
Answer to Example A:
The thirty-day period would be calculated from January
12, 2002. As such, the IDS received on February 11, 2002 would be filed within the
thirty-day period in
37 CFR 1.704(d)
, and thus would
not result in a reduction of any patent term adjustment pursuant to
37 CFR
1.704(c)(6)
,
(c)(8)
,
(c)(9)
, or
ed by the U.S.
counsel, which was received at the USPTO on February 11, 2002.
Answer to Example A:
The thirty-day period would be calculated from January
12, 2002. As such, the IDS received on February 11, 2002 would be filed within the
thirty-day period in
37 CFR 1.704(d)
, and thus would
not result in a reduction of any patent term adjustment pursuant to
37 CFR
1.704(c)(6)
,
(c)(8)
,
(c)(9)
, or
(c)(10)
.
In this example, the foreign counsel has no
substantive role in the prosecution of the U.S. application. The explicitly defined
role of the foreign counsel relative to the U.S. counsel in combination with the
practice in the described fact pattern removes any potential doubt as to the role of
the foreign counsel. For these reasons, the foreign counsel is not deemed a person
who is substantially involved in the U.S. application under
37 CFR
1.56(c)
.
Example B:
An applicant based in Paris, France, directs French
counsel to prepare, file and prosecute an application in the European Patent Office
(EPO). The EPO application is then sent to U.S. counsel by French counsel to be
reviewed, edited, and prepared for filing in the United States Patent and Trademark
Office (USPTO). The U.S. counsel works with the French counsel to review the edited
application, and then files the application at the USPTO. The review and editing of
the U.S. application filed at the USPTO also leads the French counsel to amend its
EPO application.
On January 5, 2002, the French counsel receives a
search report from the European Patent Office that includes a list of six patents. On
January 20, 2002, the U.S. counsel receives from French counsel (by overnight mail) a
copy of the communication from the EPO and suggests that the U.S. counsel review the
search report and “take appropriate action.” On January 25, 2002, the French counsel
provides a copy of the search report to the applicant. On January 30, 2002, the U.S.
counsel reviews the document and discovers a previously uncited patent
2002, the U.S. counsel receives from French counsel (by overnight mail) a
copy of the communication from the EPO and suggests that the U.S. counsel review the
search report and “take appropriate action.” On January 25, 2002, the French counsel
provides a copy of the search report to the applicant. On January 30, 2002, the U.S.
counsel reviews the document and discovers a previously uncited patent. A copy of the
patent and an IDS is then prepared and filed by the U.S. counsel, which is received
at the USPTO on February 14, 2002
Answer to Example B:
The thirty-day period would be calculated from
January 5, 2002
. As such, the submission of the IDS would not be
received within the thirty-day window in
37 CFR
1.704(d)
, and thus could result in a reduction of any patent
term pursuant to
37 CFR 1.704(c)(6)
,
(c)(8)
,
(c)(9)
, or
(c)(10)
.
In this example, the USPTO would consider the French
counsel to have been a party within the meaning of
37 CFR
1.56(c)
. The French counsel, based on the above facts, played a
substantive role in the preparation and prosecution of the U.S. application (e.g.,
the French counsel drafted the original application, worked with U.S. counsel to edit
the application and subsequently amended the EPO application based on the work
product produced with U.S. counsel).
Example C:
An applicant based in Chicago, Illinois, hires U.S.
counsel to prepare an application suitable for filing in the United States Patent and
Trademark Office (USPTO) and the European Patent Office (EPO). The U.S. counsel
engages a German attorney to assist in the review and editing of the application to
take account of issues relevant to EPO practice. The U.S. counsel then reviews the
edited application, approves the changes, and files it at the USPTO. The U.S. counsel
then directs the German attorney to file the application in the EPO. During
prosecution of the U.S. case, the U.S. counsel receives an Office action citing three
patents.
On December 1, 2001, the U.S
d editing of the application to
take account of issues relevant to EPO practice. The U.S. counsel then reviews the
edited application, approves the changes, and files it at the USPTO. The U.S. counsel
then directs the German attorney to file the application in the EPO. During
prosecution of the U.S. case, the U.S. counsel receives an Office action citing three
patents.
On December 1, 2001, the U.S. counsel sends the three
patents to the German attorney for review and appropriate action. On January 5, 2002,
the German attorney receives a search report from the EPO that cites the three
previously cited patents, plus a fourth patent, which are all designated as “X”
references. On January 15, 2002, the German attorney reviews the fourth patent and
compares it to the three patents cited in the U.S. prosecution. The German attorney
concludes that the fourth patent is duplicative of one of the three patents, and
takes no further action.
On March 1, 2002, during a routine status inquiry, the
U.S. counsel is informed of the citation of the fourth patent by the EPO and the
decision of the German attorney that the information in the newly cited patent was
duplicative of the three patents previously cited by the USPTO. The U.S. counsel also
obtains copies of the newly cited patent on this date. On March 5, 2002, the U.S.
counsel files an IDS containing the newly cited patent, which is received at the
USPTO on the same date.
Answer to Example C:
The thirty-day period would be calculated from January
5, 2002. As such, the submission of the IDS would be determined to have not been
received within the thirty-day period in
37 CFR
1.704(d)
, and thus could result in a reduction of any patent
term pursuant to
37 CFR 1.704(c)(6)
,
(c)(8)
,
(c)(9)
, or
g the newly cited patent, which is received at the
USPTO on the same date.
Answer to Example C:
The thirty-day period would be calculated from January
5, 2002. As such, the submission of the IDS would be determined to have not been
received within the thirty-day period in
37 CFR
1.704(d)
, and thus could result in a reduction of any patent
term pursuant to
37 CFR 1.704(c)(6)
,
(c)(8)
,
(c)(9)
, or
(c)(10)
.
In this example, the USPTO would consider the
participation of the German attorney in the prosecution and decision-making as to the
relevance of the newly cited art vis-à-vis the previously cited three patents to be a
substantive participation in the U.S. prosecution. As such, the German attorney would
be considered by the USPTO to be a party covered by
37 CFR
1.56(c)
. Accordingly, evaluation of compliance with
37
CFR 1.704(d)
would consider the date that the foreign counsel
first learned of the fourth patent (i.e., the newly cited reference).
V.
37 CFR 1.704(e)
37 CFR
1.704(e)
provides that a submission of a request under
37 CFR
1.705(c)
for reinstatement of reduced patent term adjustment will
not be considered a failure to engage in reasonable efforts to conclude prosecution
(processing or examination) of the application under
37 CFR 1.704(c)(10)
. The Office will
not deem such a failure to engage in reasonable efforts to conclude processing or
examination of the application under
37 CFR 1.704(c)(10)
because the
statute expressly requires that all such requests be filed prior to the issuance of the
patent. See
35 U.S.C.
154(b)(3)(C)
.
VI.
37 CFR 1.704(f)
37 CFR 1.704(f)
defines what is meant
by “condition for examination” for purposes of
37 CFR 1.704(c)(13)
. Specifically,
37 CFR
1.704(f)
defines that an application filed under
35 U.S.C
examination of the application under
37 CFR 1.704(c)(10)
because the
statute expressly requires that all such requests be filed prior to the issuance of the
patent. See
35 U.S.C.
154(b)(3)(C)
.
VI.
37 CFR 1.704(f)
37 CFR 1.704(f)
defines what is meant
by “condition for examination” for purposes of
37 CFR 1.704(c)(13)
. Specifically,
37 CFR
1.704(f)
defines that an application filed under
35 U.S.C.
111(a)
is in condition for examination when it includes a
specification, including at least one claim and an abstract (
37 CFR 1.72(b)
),
and has papers in compliance with
37 CFR 1.52
, drawings (if any) in
compliance with
37 CFR
1.84
, any English translation required by
37 CFR 1.52(d)
or
37 CFR
1.57(a)
, a “Sequence Listing” incompliance with
37 CFR 1.821
through
1.825
(if applicable), a “Sequence Listing XML” in compliance
with
37 CFR
1.831
through
1.835
(if applicable), an inventor's
oath or declaration or an application data sheet containing the information specified in
37 CFR
1.63(b)
, the basic filing fee (
37 CFR 1.16(a)
or
(c)
), the search
fee (
37 CFR
1.16(k)
or
(m)
), the examination fee
(
37 CFR
1.16(o)
or
(q)
), any certified copy of the
previously filed application required by
37 CFR 1.57(a)
, and any application
size fee required by the Office under
37 CFR 1.16(s)
.
37 CFR
1.704(f)
also provides that an international application is in
condition for examination when the application has entered the national stage as defined
in
37 CFR
1.491(b)
, and includes a specification, including at least one
claim and an abstract (
37 CFR 1.72(b)
), and has papers in compliance with
37 CFR
1.52
, drawings (if any) in compliance with
37 CFR 1.84
, a
“Sequence Listing” in compliance with
37 CFR 1.821
through
1.825
(if applicable), a “Sequence Listing XML” in compliance
with
37 CFR
1.831
through
1.835
(if applicable), an inventor's
oath or declaration or an application data sheet containing the information specified
37 CFR
1.63(b)
, the search fee (
37 CFR 1.492(b)
), the examination
fee (
37 CFR
1.492(c)
), and any app
nce with
37 CFR 1.84
, a
“Sequence Listing” in compliance with
37 CFR 1.821
through
1.825
(if applicable), a “Sequence Listing XML” in compliance
with
37 CFR
1.831
through
1.835
(if applicable), an inventor's
oath or declaration or an application data sheet containing the information specified
37 CFR
1.63(b)
, the search fee (
37 CFR 1.492(b)
), the examination
fee (
37 CFR
1.492(c)
), and any application size fee required by the Office
under
37 CFR
1.492(j)
.
37 CFR 1.704(f)
also provides that
an application shall be considered as having papers in compliance with
37 CFR 1.52
,
drawings (if any) in compliance with
37 CFR 1.84
, and a “Sequence
Listing” in compliance with
37 CFR 1.821
through
1.825
(if applicable), or a “Sequence Listing XML” in compliance
with
37 CFR
1.831
through
1.835
(if applicable) for purposes
of
37 CFR
1.704(f)
on the filing date of the latest reply (if any)
correcting the papers, drawings, “Sequence Listing”, or “Sequence Listing XML” that is
prior to 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.
[top]

## 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_S2732. Check the current official text before relying on it. Not legal advice.