# MPEP § 2734: Application for Patent Term Adjustment; Due Care Showing

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2734

## Section

- **Citation:** MPEP § 2734
- **Heading:** Application for Patent Term Adjustment; Due Care Showing
- **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 § 2734

## Text

[Editor Note:
37 CFR 1.705(b) and
(c)
below include amendments applicable only to patents granted on
or after January 14, 2013. See
37 CFR 1.705 (pre-2013-04-01)
with
respect to patents granted prior to January 14, 2013.]
37 CFR 1.705  Patent term adjustment determination.
*****
(b) Any request for reconsideration of the patent term adjustment
indicated on the patent must be by way of an application for patent term
adjustment filed no later than two months from the date the patent was granted.
This two-month period may be extended under the provisions of
§ 1.136(a)
.
An application for patent term adjustment under this section must be accompanied
by:
(1) The fee set forth in
§ 1.18(e)
; and
(2) A statement of the facts involved, specifying:
(i) The correct patent term adjustment and the basis or
bases under
§ 1.702
for the
adjustment;
(ii) The relevant dates as specified in
§§ 1.703(a) through
(e)
for which an adjustment is sought and the
adjustment as specified in
§ 1.703(f)
to
which the patent is entitled;
(iii) Whether the patent is subject to a terminal
disclaimer and any expiration date specified in the terminal
disclaimer; and
(iv)
(A) Any circumstances during the prosecution of
the application resulting in the patent that constitute a
failure to engage in reasonable efforts to conclude processing
or examination of such application as set forth in
§ 1.704
;
or
(B) That there were no circumstances constituting a
failure to engage in reasonable efforts to conclude processing
or examination of such application as set forth in
§ 1.704
.
circumstances during the prosecution of
the application resulting in the patent that constitute a
failure to engage in reasonable efforts to conclude processing
or examination of such application as set forth in
§ 1.704
;
or
(B) That there were no circumstances constituting a
failure to engage in reasonable efforts to conclude processing
or examination of such application as set forth in
§ 1.704
.
(c) Any request for reinstatement of all or part of the period of
adjustment reduced pursuant to
§ 1.704(b)
for failing to
reply to a rejection, objection, argument, or other request within three months of
the date of the mailing of the Office communication notifying the applicant of the
rejection, objection, argument, or other request must be filed prior to the
issuance of the patent. This time period is not extendable. Any request for
reinstatement of all or part of the period of adjustment pursuant to
§ 1.704(b)
must be accompanied by:
(1) The fee set forth in
§ 1.18(f)
; and
(2) A showing to the satisfaction of the Director that, in
spite of all due care, the applicant was unable to reply to the rejection,
objection, argument, or other request within three months of the date of
mailing of the Office communication notifying the applicant of the
rejection, objection, argument, or other request. The Office shall not grant
any request for reinstatement for more than three additional months for each
reply beyond three months from the date of mailing of the Office
communication notifying the applicant of the rejection, objection, argument,
or other request.
*****
I.
OFFICE PROCEDURE FOR THE TREATMENT OF REQUESTS FOR RECONSIDERATION OF PATENT TERM
ADJUSTMENT
37 CFR
1.705(b)
provides that any request for reconsideration of the
patent term adjustment indicated on the patent must be by way of an application for
patent term adjustment which must filed within two months of the date the patent was
granted and accompanied by the fee set forth in
37 CFR 1.18(e)
and a statement of
the facts involved
ENT OF REQUESTS FOR RECONSIDERATION OF PATENT TERM
ADJUSTMENT
37 CFR
1.705(b)
provides that any request for reconsideration of the
patent term adjustment indicated on the patent must be by way of an application for
patent term adjustment which must filed within two months of the date the patent was
granted and accompanied by the fee set forth in
37 CFR 1.18(e)
and a statement of
the facts involved.
37
CFR 1.705(b)(2)
provides that such statement of facts involved
must specify: (1) the correct patent term adjustment and the basis or bases under
37 CFR
1.702
for the adjustment; (2) the relevant dates as specified in
37 CFR 1.703(a)
through (e)
for which an adjustment is sought and the adjustment
as specified in
37 CFR
1.703(f)
to which the patent is entitled; (3) whether the patent
is subject to a terminal disclaimer and any expiration date specified in the terminal
disclaimer; and (4) any circumstances, if any, during the prosecution of the application
resulting in the patent that constitute a failure to engage in reasonable efforts to
conclude processing or examination of such application as set forth in
37 CFR 1.704
(or a
statement that there were no such circumstances). The two month period set in
37 CFR
1.705(b)
is extendable under
37 CFR 1.136(a)
for up to five
additional months (permitting patentee to request reconsideration of the patent term
adjustment indicated on the patent as late as within seven months after the date the
patent was granted).
The Office will conduct a manual redetermination of
patent term adjustment in response to a request for reconsideration of the patent term
adjustment. The Office makes the patent term adjustment determination indicated in the
patent by a computer program that uses the information recorded in the Office's One
Patent Service Gateway (OPSG) system, except when an applicant requests reconsideration
pursuant to
37 CFR 1.705
. See
Changes
to Implement Patent Term Adjustment Under Twenty-Year Patent Term,
65 FR
56365, 56370, 56380-81 (September 18, 2000) (final rule)
s the patent term adjustment determination indicated in the
patent by a computer program that uses the information recorded in the Office's One
Patent Service Gateway (OPSG) system, except when an applicant requests reconsideration
pursuant to
37 CFR 1.705
. See
Changes
to Implement Patent Term Adjustment Under Twenty-Year Patent Term,
65 FR
56365, 56370, 56380-81 (September 18, 2000) (final rule). The patent term adjustment
provisions of
35
U.S.C. 154(b)
are complex, with numerous types of communications
exchanged between applicants and the Office during the patent application process. Thus,
a manual redetermination of patent term adjustment could result in (1) an amount of
patent term adjustment that is the amount of patent term adjustment requested by the
applicant; (2) the same amount of patent term adjustment as indicated in the patent
(i.e., there being no change); or (3) a different amount of patent term adjustment that
may be higher or lower than the patent term adjustment as indicated in the patent.
If the patent term adjustment redetermination results in
the amount of patent term adjustment requested by the applicant, the Office will issue a
decision granting the request for reconsideration and a certificate of correction that
indicates the revised patent term adjustment. If the patent term adjustment
redetermination results in the same amount of patent term adjustment as indicated in the
patent (i.e., there being no change) and the Office does not require any additional
information to render a decision on the request for reconsideration, the Office will
issue a decision denying the request for reconsideration, and this decision is the
Director's decision on the applicant's request for reconsideration within the meaning of
35 U.S.C.
154(b)(4)
nt term adjustment as indicated in the
patent (i.e., there being no change) and the Office does not require any additional
information to render a decision on the request for reconsideration, the Office will
issue a decision denying the request for reconsideration, and this decision is the
Director's decision on the applicant's request for reconsideration within the meaning of
35 U.S.C.
154(b)(4)
.
If the patent term adjustment redetermination results in
a different amount of patent term adjustment (higher or lower than the patent term
adjustment indicated in the patent), the Office will issue a redetermination of patent
term adjustment that explains how the Office arrived at the different amount of patent
term adjustment. This redetermination of patent term adjustment is not the Director's
decision on the applicant's request for reconsideration within the meaning of
35 U.S.C.
154(b)(4)
, but is simply a new patent term adjustment
determination (e.g., a redetermination). If the Office issues such a redetermination of
patent term adjustment in response to the request for reconsideration, the applicant has
two months from the date of the redetermination to file a renewed request for
reconsideration of the patent term adjustment that addresses the issues included in the
Office's redetermination of patent term adjustment. No additional fee under
37 CFR
1.18(e)
is required. The two-month period to file a renewed
request for reconsideration of patent term adjustment is extendable under
37 CFR
1.136(a)
.
If the patent term adjustment redetermination results in
the same amount of patent term adjustment as indicated in the patent (i.e., there being
no change) but the Office requires additional information to render a decision on the
request for reconsideration of the patent term adjustment, the Office will issue a
requirement for information to obtain the additional information. This requirement for
information is not the Director's decision on the applicant's request for
reconsideration within the meaning of
35 U.S.C
tent (i.e., there being
no change) but the Office requires additional information to render a decision on the
request for reconsideration of the patent term adjustment, the Office will issue a
requirement for information to obtain the additional information. This requirement for
information is not the Director's decision on the applicant's request for
reconsideration within the meaning of
35 U.S.C. 154(b)(4)
. If the Office
issues a requirement for information in response to the request for reconsideration of
the patent term adjustment, the applicant has two months from the date of the
requirement for information to file a renewed request for reconsideration of the patent
term adjustment. The renewed request should supply the required information and no
additional fee is required. This two-month period is extendable under
37 CFR
1.136(a)
.
The Office will again conduct a redetermination of patent
term adjustment in response to any renewed request for reconsideration, which is filed
in response to a redetermination of patent term adjustment and/or a requirement for
information. If this redetermination of patent term adjustment results in the amount of
patent term adjustment requested by the applicant, the Office will issue a decision
granting the request for reconsideration and a certificate of correction that indicates
the revised patent term adjustment. If this redetermination of patent term adjustment
results in the same amount of patent term adjustment as indicated in the previous
redetermination of patent term adjustment or in the patent, the Office will generally
issue a decision denying the request for reconsideration and a certificate of
correction, if necessary, indicating the revised patent term adjustment as the result of
a redetermination of patent term adjustment. The decision denying the request for
reconsideration is the Director's decision on the applicant's request for
reconsideration within the meaning of
35 U.S.C. 154(b)(4)
ice will generally
issue a decision denying the request for reconsideration and a certificate of
correction, if necessary, indicating the revised patent term adjustment as the result of
a redetermination of patent term adjustment. The decision denying the request for
reconsideration is the Director's decision on the applicant's request for
reconsideration within the meaning of
35 U.S.C. 154(b)(4)
. In certain,
limited circumstances, the redetermination may result in another redetermination of
patent term adjustment or requirement for information. In such a case, applicant will be
given another opportunity to file a renewed request for reconsideration as described
above.
Only if the Office issues a decision denying patentee’s
request for reconsideration, then patentee may appeal such decision to the District
Court for the Eastern District of Virginia by filing a civil complaint within 180 days
of the date of the decision on the request for reconsideration of patent term adjustment
(within the meaning of
35 U.S.C. 154(b)(4)
).
Section 1(h)(3) of the AIA Technical Corrections Act
amended
35 U.S.C.
154(b)(4)
to provide that “[a]n applicant dissatisfied with the
Director’s decision on the applicant’s request for reconsideration under paragraph
(3)(B)(ii)
shall have exclusive remedy by a civil action against
the Director filed in the United States District Court for the Eastern District of
Virginia within 180 days after the date the Director’s decision on the applicant’s
request for reconsideration.” The change to
35 U.S.C. 154(b)(4)
clarifies that
ith the
Director’s decision on the applicant’s request for reconsideration under paragraph
(3)(B)(ii)
shall have exclusive remedy by a civil action against
the Director filed in the United States District Court for the Eastern District of
Virginia within 180 days after the date the Director’s decision on the applicant’s
request for reconsideration.” The change to
35 U.S.C. 154(b)(4)
clarifies that
(1) a civil action under
35 U.S.C. 154(b)(4)
is not an
alternative to requesting reconsideration of the patent term adjustment under
35 U.S.C.
154(b)(3)
but is the remedy for an applicant who is dissatisfied
with the Director’s decision on the applicant’s request for reconsideration under
35 U.S.C.
154(b)(3)
; and (2) a civil action provided in
35 U.S.C.
154(b)(4)
is the
exclusive
remedy for an applicant
who is dissatisfied with the Director’s decision on the applicant’s request for
reconsideration. In other words, an applicant that is dissatisfied with the patent term
adjustment determination on the patent must first request reconsideration under
35 U.S.C.
154(b)(3)
and
37 CFR 1.705(b)
. Only after
receiving a decision denying the request for reconsideration, may the applicant file a
civil action, proscribed in
35 U.S.C. 154(b)(4)
, if the
applicant is dissatisfied with the decision on the request for reconsideration. This
statutory change is applicable for all patents that issue on or after January 14, 2013.
For patents that issued prior to January 14, 2013,
35 U.S.C.
154(b)(4)
previously required that patentee commence a civil
action within 180 days of the grant of the patent. Patentee is not entitled to equitable
tolling of the 180-day period to commence the civil action in the district court where
patentee did not lack sufficient facts on which it could sue but instead waited until
another, unrelated party secured a favorable ruling on a legal theory in another court
proceeding. See
Novartis AG v. Lee,
740 F.3d 593, 109 USPQ2d 1385
(Fed. Cir. 2014). It is noted, however, that the U.S
entitled to equitable
tolling of the 180-day period to commence the civil action in the district court where
patentee did not lack sufficient facts on which it could sue but instead waited until
another, unrelated party secured a favorable ruling on a legal theory in another court
proceeding. See
Novartis AG v. Lee,
740 F.3d 593, 109 USPQ2d 1385
(Fed. Cir. 2014). It is noted, however, that the U.S. District Court for the District of
Columbia affirmed a prior decision of the court holding that the 180-day deadline under
35 U.S.C.
154(b)(4)(A)
for filing a lawsuit challenging a PTA determination
was tolled in the circumstances of that case by the patent holders' timely requests for
reconsideration of the PTA determinations set forth in the patents at issue. See
Bristol-Myers Squibb Co. v. Kappos,
891 F. Supp. 2d 135 (D.D.C.
2012) (denying reconsideration of the decision published at 841 F. Supp. 2d 238 (D.D.C.
2012)). Section 1(n) of the AIA Technical Corrections Act provides that amendments made
in section 1(h) shall take effect on January 14, 2013 (the date of enactment) and shall
apply to the proceedings commenced on or after January 14, 2013. Section 1(n) of the
Technical Corrections Act does not limit the applicability of the changes in section
1(h) to applications filed on or after January 14, 2013. Cf. Section 4405(a) of the
American Inventors Protection Act of 1999 (AIPA), Public Law 106-113, 113 Stat. 1501,
1501A-552 through 1501A-591 (limiting the applicability of the patent term adjustment
provisions of the AIPA to applications filed on or after May 29, 2000 (the date that is
six months after the enactment of AIPA)). Patent term adjustment proceedings are not
“commenced” until the Office notifies the applicant of the Office’s patent term
adjustment determination under
35 U.S.C. 154(b)(3)
, which now
occurs when the patent is granted. Accordingly, the changes to
35 U.S.C. 154
in
section 1(h) of the AIA Technical Corrections Act apply to any patent granted on or
after January 14, 2013.
II
he enactment of AIPA)). Patent term adjustment proceedings are not
“commenced” until the Office notifies the applicant of the Office’s patent term
adjustment determination under
35 U.S.C. 154(b)(3)
, which now
occurs when the patent is granted. Accordingly, the changes to
35 U.S.C. 154
in
section 1(h) of the AIA Technical Corrections Act apply to any patent granted on or
after January 14, 2013.
II.
DUE CARE SHOWING
37 CFR
1.705(c)
implements the provisions of
35 U.S.C.
154(b)(3)(C)
and specifically provides that a request for
reinstatement of all or part of the period of adjustment reduced pursuant to
37 CFR
1.704(b)
for failing to reply to a rejection, objection, argument,
or other request within three months of the date of mailing of the Office communication
notifying the applicant of the rejection, objection, argument, or other request must
include: (1) the fee set forth in
37 CFR 1.18(f)
; and (2) a showing to
the satisfaction of the Director that, in spite of all due care, the applicant was
unable to reply to the rejection, objection, argument, or other request within three
months of the date of mailing of the Office communication notifying the applicant of the
rejection, objection, argument, or other request.
37 CFR 1.705(c)
also provides that
the Office shall not grant any request for reinstatement for more than three additional
months for each reply beyond three months of the date of mailing of the Office
communication notifying the applicant of the rejection, objection, argument, or other
request (
35 U.S.C.
154(b)(3)(C)
).
35 U.S.C. 154(b)(3)(C)
and
37 CFR
1.705(c)
also requires that the request for reinstatement be filed
prior to the issuance of the patent. Because
35 U.S.C. 154(b)(3)(C)
requires that
the request be filed prior to the issuance of the patent, the Office will not consider
or act on a request for reinstatement in a paper filed after the patent is issued. For
example, a request for reinstatement cannot be made as part of a request for
reconsideration under
37 CFR 1.705(b)
t for reinstatement be filed
prior to the issuance of the patent. Because
35 U.S.C. 154(b)(3)(C)
requires that
the request be filed prior to the issuance of the patent, the Office will not consider
or act on a request for reinstatement in a paper filed after the patent is issued. For
example, a request for reinstatement cannot be made as part of a request for
reconsideration under
37 CFR 1.705(b)
. Applicants are
aware during the pendency of the application of situations where the reply was filed
more than three months after the Office communication notifying the applicant of the
rejection, objection, argument, or other request. If applicants believe that they can
make the required showing that, in spite of all due care, the applicant was unable to
rely to the rejection, objection, argument or other Office request within three months,
then applicants should file the request for reinstatement promptly and no later than at
least one day prior to the issuance of the patent. Applicants need not review of the
patent term adjustment calculation to establish a request for reinstatement under
37 CFR
1.705(c)
. The Office will not delay issuance of the patent but
will make a decision on the request for reinstatement after the grant of the patent and
if appropriate, issue a certificate of correction to revise the patent term adjustment
determination on the patent.
As noted
supra,
37 CFR
1.705(c)
continues to require that any request for reinstatement
of all or part of the cumulative period of time of an adjustment reduced under
35 U.S.C.
154(b)(2)(C)
, on the basis of a showing that, in spite of all due
care, the applicant was unable to respond within the three-month period, must be filed
prior to the issuance of the patent. Thus, where an applicant is seeking reinstatement
under
35 U.S.C.
154(b)(3)(C)
of patent term adjustment reduced under
35 U.S.C.
154(b)(2)(C)
, the showing required by
35 U.S.C.
154(b)(3)(C)
must be filed prior to the issuance of the patent
a showing that, in spite of all due
care, the applicant was unable to respond within the three-month period, must be filed
prior to the issuance of the patent. Thus, where an applicant is seeking reinstatement
under
35 U.S.C.
154(b)(3)(C)
of patent term adjustment reduced under
35 U.S.C.
154(b)(2)(C)
, the showing required by
35 U.S.C.
154(b)(3)(C)
must be filed prior to the issuance of the patent.
However, where the patentee is not seeking reinstatement under
35 U.S.C.
154(b)(3)(C)
of patent term adjustment reduced under
35 U.S.C.
154(b)(2)(C)
, but is simply contending that the Office's patent
term adjustment determination is in error with respect to the three-month timeframe in
35 U.S.C.
154(b)(2)(C)(ii)
(e.g., a reply is filed within the three-month
timeframe in
35 U.S.C.
154(b)(2)(C)(ii)
, but the Office's patent term adjustment
determination treats the reply as having been filed outside the three-month period in
35 U.S.C.
154(b)(2)(C)(ii)
), any request for reconsideration or review of a
patent term adjustment determination is by way of an application for patent term
adjustment under
37 CFR 1.705(b)
filed no later than
two months from the date the patent was granted (this two-month period being extendable
under the provisions of
37 CFR 1.136(a)
).
Filing a reply outside of three months after an Office action is
per se
a failure to engage in reasonable efforts to conclude
prosecution under
35
U.S.C. 154(b)(2)(C)(ii)
unless applicant can establish that the
delay was “in spite of all due care.” The provisions of
35 U.S.C. 21(b)
are applicable to the determination of three-month period for reply. If the last day of
the three-month 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 the 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
the three-month 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 the 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.
Supp. 2d 214 (D.D.C. 2011). For example, 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 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.
Accordingly, a request for reinstatement of all or part of the period of adjustment
under
37
CFR 1.705(c)
would not be applicable since applicant would not
have been deemed to reply more than three months from the date of the Office action.
The Office “shall reinstate all or part of the cumulative
period of time of an adjustment reduced under [
35 U.S.C. 154(b)(2)(C)
] if the
applicant… makes a showing that, in spite of all due care, the applicant was unable to
respond within the 3-month period….” See
35 U.S.C. 154(b)(3)(C)
. The “due
care” of a reasonably prudent person standard has been applied in deciding petitions
under the “unavoidable delay” standard of
35 U.S.C. 133
. See
In re
Mattullath,
38 App. D.C. 497, 514-15 (1912) (“the word ‘unavoidable’ … is
applicable to ordinary human affairs, and requires no more or greater care or diligence
than is generally used and observed by prudent and careful men in relation to their most
important business”) (quoting and adopting
Ex parte Pratt,
1887 Dec.
Comm’r Pat. 31, 32-33); see also
Ray v. Lehman,
55 F.3d 606, 609, 34
USPQ2d 1786, 1787 (Fed. Cir
pp. D.C. 497, 514-15 (1912) (“the word ‘unavoidable’ … is
applicable to ordinary human affairs, and requires no more or greater care or diligence
than is generally used and observed by prudent and careful men in relation to their most
important business”) (quoting and adopting
Ex parte Pratt,
1887 Dec.
Comm’r Pat. 31, 32-33); see also
Ray v. Lehman,
55 F.3d 606, 609, 34
USPQ2d 1786, 1787 (Fed. Cir. 1995) (“in determining whether a delay…was unavoidable, one
looks to whether the party…exercised the due care of a reasonably prudent person”).
While the legislative history of the American Inventors Protection Act of 1999 is silent
as to the meaning of the phrase “in spite of all due care,” the phrases “all due care”
and “unable to respond” invoke a higher degree of care than the ordinary due care
standard of
35
U.S.C. 133
, as well as the “reasonable efforts to conclude
processing or examination [or prosecution] of an application” standard of
35 U.S.C.
154(b)(2)(C)(i) and (iii)
. Therefore, applicants should not rely
upon decisions relating to the “unavoidable delay” standard of
35 U.S.C. 133
as controlling in a request to reinstate reduced patent term adjustment on the basis of
a showing that the applicant was unable to respond within the three-month period in
spite of all due care.
Examples
The following are examples of showings that may establish that the
applicant was unable to respond within the three-month period in spite of all due
care:
(A) a showing that the original three-month period was
insufficient to obtain the test data necessary for an affidavit or declaration
under
37 CFR
1.132
that was submitted with a reply filed outside the
original three-month period;
(B) a showing that the applicant was unable to reply within the
original three-month period due to a natural disaster;
(C) a showing that applicant was unable to reply within the
original three-month period because testing was required to reply to an Office
action, and the testing necessarily took longer than three months; or
(D) a showing that the
y filed outside the
original three-month period;
(B) a showing that the applicant was unable to reply within the
original three-month period due to a natural disaster;
(C) a showing that applicant was unable to reply within the
original three-month period because testing was required to reply to an Office
action, and the testing necessarily took longer than three months; or
(D) a showing that the applicant was unable to reply within the
original three-month period due to illness or death of a sole practitioner of
record who was responsible for prosecuting the application.
The patent term adjustment reinstated would be limited to the period
in which the showing establishes that the applicant was acting with all due care to
reply to the Office notice or action, but circumstances (outside applicant’s control)
made applicant unable to reply in spite of such due care. An applicant will not be
able to show that the applicant was unable to reply within the three-month period “in
spite of all due care” if the reply was not filed within the three-month period due
to reasons within the control of applicant or agencies within the applicant’s
control.
Examples of circumstances that would
NOT
establish that
the applicant was unable to respond within the three-month period in spite of all due
care are:
(A) an applicant’s or representative’s preoccupation with other
matters (e.g., an
inter partes
lawsuit or interference) that
is given priority over prosecution of the application;
(B) illness or death of the practitioner in charge of the
application if the practitioner is associated (in a law firm) with other
practitioners (since the other practitioners could have taken action to reply
within the three-month period);
(C) time consumed with communications between the applicant and
the applicant's representative, regardless of whether the applicant resides in
the United States or chooses to communicate with the United States
representative via a foreign representative;
(D) vacation or other non-attention to an application that res
her practitioners could have taken action to reply
within the three-month period);
(C) time consumed with communications between the applicant and
the applicant's representative, regardless of whether the applicant resides in
the United States or chooses to communicate with the United States
representative via a foreign representative;
(D) vacation or other non-attention to an application that results
in a failure to reply within the three-month period;
(E) applicant filing a reply on or near the last day of the
three-month period using first class mail with a certificate of mailing under
37 CFR
1.8
, rather than by electronic filing, Priority Mail
Express
®
under
37 CFR
1.10
or facsimile (if permitted), and the reply is not
received (filed) in the Office until after the three-month period; or
(F) failure of clerical employees of applicant or applicant’s
representative to properly docket the Office action or notice for reply or
perform other tasks necessary for reply within the three-month period.
Rarely is the power of attorney given to a single attorney and often
many attorneys are given power of attorney in an application. An attorney in
litigation, working on an interference or taking a vacation is generally aware of
that fact before the event and should make plans for another to take over the work so
that it is completed and filed in the Office within the three-month period. Thus,
failure to reply within the three-month period in
35 U.S.C. 154(b)(2)(C)(ii)
due to
preoccupation with other matters (e.g., an
inter partes
lawsuit or
interference) given priority over the application, or vacation or other non-attention
to an application, cannot be relied upon to show that applicant was unable to reply
“in spite of all due care” under
35 U.S.C. 154(b)(3)(C)
.
III
nth period. Thus,
failure to reply within the three-month period in
35 U.S.C. 154(b)(2)(C)(ii)
due to
preoccupation with other matters (e.g., an
inter partes
lawsuit or
interference) given priority over the application, or vacation or other non-attention
to an application, cannot be relied upon to show that applicant was unable to reply
“in spite of all due care” under
35 U.S.C. 154(b)(3)(C)
.
III.
INTERIM PROCEDURE FOR REQUESTING PTA
RECALCULATION WHEN THE OFFICE FAILS TO RECOGNIZE THE TIMELY FILING OF THE SAFE HARBOR
STATEMENT
For safe harbor statements under 37 CFR 1.704(d) filed
before July 17, 2023, the Office has created an interim procedure by which a patentee
can request recalculation of patent term adjustment where the sole reason for contesting
the patent term adjustment determination is the Office’s failure to recognize a timely
filed safe harbor statement accompanying an information disclosure statement. The
interim procedure waives the fee under
37 CFR 1.705(b)(1)
as set forth in
37 CFR
1.18(e)
to file the request for reconsideration. The interim
procedure is not applicable to safe harbor statements filed on or after July 17, 2023,
because the Office updated the patent term adjustment computer program and provided
notice to the public that the computer program had been updated in the final rule
Standardization of the Patent Term Adjustment Statement Regarding
Information Disclosure Statements,
88 FR 39172 (June 15, 2023).
Under the interim procedure, recalculation of patent
term adjustment is requested by submitting form PTO/SB/134 in lieu of the request and
fee set forth in
37 CFR 1.705(b)
. This form, “Request
for Reconsideration of Patent Term Adjustment in View of Safe Harbor Statement Under 37
CFR 1.704(d)”, is available on the USPTO website (
www.uspto.gov
) and is reproduced below.
The form must be filed within the time period set forth in
37 CFR
1.705(b)
, and the Office will not grant any request for
recalculation of the patent term adjustment that is not timely filed
705(b)
. This form, “Request
for Reconsideration of Patent Term Adjustment in View of Safe Harbor Statement Under 37
CFR 1.704(d)”, is available on the USPTO website (
www.uspto.gov
) and is reproduced below.
The form must be filed within the time period set forth in
37 CFR
1.705(b)
, and the Office will not grant any request for
recalculation of the patent term adjustment that is not timely filed. The time period
set forth set forth in
37 CFR 1.705(b)
may be extended
under the provisions of
37 CFR 1.136(a)
. The Office of
Management and Budget (OMB) has determined that, under 5 CFR 1320.3(h), Form PTO/SB/134
does not collect “information” within the meaning of the Paperwork Reduction Act of
1995.
If the request for recalculation is not based solely on
the Office’s failure to recognize a timely filed, compliant safe harbor statement under
37 CFR
1.704(d)
, the patentee must file a request for reconsideration of
the patent term adjustment indicated on the patent under
37 CFR
1.705(b)
with the fee set forth in
37 CFR 1.18(e)
. If
a patentee files both form PTO/SB/134 and a request under
37 CFR
1.705(b)
prior to the Office’s recalculation of patent term
adjustment, the Office will treat both papers together as a request for reconsideration
of the patent term adjustment indicated on the patent under
37 CFR
1.705(b)
and require the fee set forth in
37 CFR
1.18(e)
.
While the Office’s interim procedure waives the fee
under
37
CFR 1.705(b)(1)
as set forth in
37 CFR 1.18(e)
to
file the form PTO/SB/134, it does not waive any extensions of time fees due under
37 CFR
1.705(b)
and
37 CFR 1.136
. In addition, it is
noted that the fee specified in
37 CFR 1.18(e)
is required for a
request for reconsideration under
37 CFR 1.705
, and the Office may
only refund fees paid by mistake or in excess of that required (
35 U.S.C. 42(d)
)
FR 1.705(b)(1)
as set forth in
37 CFR 1.18(e)
to
file the form PTO/SB/134, it does not waive any extensions of time fees due under
37 CFR
1.705(b)
and
37 CFR 1.136
. In addition, it is
noted that the fee specified in
37 CFR 1.18(e)
is required for a
request for reconsideration under
37 CFR 1.705
, and the Office may
only refund fees paid by mistake or in excess of that required (
35 U.S.C. 42(d)
).
Thus, the interim procedure is not a basis for requesting a refund of the fee specified
in
37 CFR
1.18(e)
for any request for reconsideration under
37 CFR
1.705
, including any previously filed request that was solely
based on the Office's error in assessing an applicant delay under
37 CFR
1.704(c)(6)
,
(c)(8)
,
(c)(9)
,
(c)(10)
, or
(c)(12)
for the submission of an information disclosure statement that was accompanied by the
statement under
37 CFR 1.704(d)
.
The Office of Petitions will manually review the request
for recalculation of patent term adjustment filed under the interim procedure.
Specifically, the Office of Petitions will review the accuracy of the patent term
adjustment calculation in view of
37 CFR 1.702
through
1.704
. After the review by the Office of Petitions, the patentee
will be given one opportunity to respond to the recalculation. The response must be
filed by patentee within two months of the date of the recalculation is mailed or given.
No extensions of time will be granted. If patentee responds to the recalculation by
requesting changes to the recalculation based on issues not related to the safe harbor
statement, patentee must comply with the requirements of
37 CFR 1.705(b)(1) and
tunity to respond to the recalculation. The response must be
filed by patentee within two months of the date of the recalculation is mailed or given.
No extensions of time will be granted. If patentee responds to the recalculation by
requesting changes to the recalculation based on issues not related to the safe harbor
statement, patentee must comply with the requirements of
37 CFR 1.705(b)(1) and
(2)
.
If patentee fails to respond to the recalculation and
the Office’s determination of the amount of recalculated patent term adjustment is
different from that printed on the front of the patent, the Office will
sua
sponte
issue a certificate of correction that reflects the recalculated
patent term adjustment. If patentee files a response after the Office’s recalculation
and the Office maintains its recalculation, the Office will issue its decision
confirming its recalculation pursuant to
35 U.S.C. 154(b)(3)(B)(ii)
, and this
decision is the Director’s decision under
35 U.S.C. 154(b)(4)
. The Office's
initial recalculation of patent term adjustment under the interim procedure described
above is
not
the Director’s decision under
35 U.S.C.
154(b)(4)
.
A copy of form PTO/SB/134 is reproduced below.
[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)

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2734. Check the current official text before relying on it. Not legal advice.