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2730    Applications Filed on or After May 29, 2000; Grounds for Adjustment [R-11.2013]

35 U.S.C. 154   Contents and term of patent; provisional rights.

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  • (b) ADJUSTMENT OF PATENT TERM.—
    • (1) PATENT TERM GUARANTEES.—
      • (A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to—
        • (i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 of this title not later than 14 months after—
          • (I) the date on which an application was filed under section 111(a) ; or
          • (II) the date of commencement of the national stage under section 371 in an international application;
        • (ii) respond to a reply under section 132, or to an appeal taken under section 134, within 4 months after the date on which the reply was filed or the appeal was taken;
        • (iii) act on an application within 4 months after the date of a decision by the Patent Trial and Appeal Board under section 134 or 135 or a decision by a Federal court under section 141, 145, or 146 in a case in which allowable claims remain in the application; or
        • (iv) issue a patent within 4 months after the date on which the issue fee was paid under section 151 and all outstanding requirements were satisfied, the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.
      • (B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application under section 111(a) in the United States, or, in the case of an international application, the date of commencement of the national stage under section 371 in the international application, not including—
        • (i) any time consumed by continued examination of the application requested by the applicant under section 132(b);
        • (ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an order under section 181, or any time consumed by appellate review by the Patent Trial and Appeal Board or by a Federal court; or
        • (iii) any delay in the processing of the application by the United States Patent and Trademark Office requested by the applicant except as permitted by paragraph (3)(C), the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.
      • (C) GUARANTEE OF ADJUSTMENTS FOR DELAYS DUE TO DERIVATION PROCEEDINGS, SECRECY ORDERS, AND APPEALS.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to—
        • (i) a proceeding under section 135(a);
        • (ii) the imposition of an order under section 181; or
        • (iii) appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability, the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.
    • (2) LIMITATIONS.—
      • (A) IN GENERAL.— To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.
      • (B) DISCLAIMED TERM.— No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.
      • (C) REDUCTION OF PERIOD OF ADJUSTMENT.—
        • (i) The period of adjustment of the term of a patent under paragraph (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 of the application.
        • (ii) With respect to adjustments to patent term made under the authority of paragraph (1)(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 3 months that are taken to respond to a notice from the Office making any rejection, objection, argument, or other request, measuring such 3-month period from the date the notice was given or mailed to the applicant.
        • (iii) The Director shall 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.
    • (3) PROCEDURES FOR PATENT TERM ADJUSTMENT DETERMINATION.—
      • (A) The Director shall prescribe regulations establishing procedures for the application for and determination of patent term adjustments under this subsection.
      • (B) Under the procedures established under subparagraph (A), the Director shall—
        • (i) make a determination of the period of any patent term adjustment under this subsection, and shall transmit a notice of that determination no later than the date of issuance of the patent; and
        • (ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.
      • (C) The Director shall reinstate all or part of the cumulative period of time of an adjustment under paragraph (2)(C) if the applicant, prior to the issuance of the patent, makes a showing that, in spite of all due care, the applicant was unable to respond within the 3-month period, but in no case shall more than three additional months for each such response beyond the original 3-month period be reinstated.
      • (D) The Director shall proceed to grant the patent after completion of the Director’s determination of a patent term adjustment under the procedures established under this subsection, notwithstanding any appeal taken by the applicant of such determination.
    • (4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION.—
      • (A) An applicant dissatisfied with the Director’s decision on the applicant’s request for reconsideration under paragraph (3)(B)(ii) shall have the 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 of the Director’s decision on the applicant’s request for reconsideration. Chapter 7 of title 5, United States Code, shall apply to such action. Any final judgment resulting in a change to the period of adjustment of the patent term shall be served on the Director, and the Director shall thereafter alter the term of the patent to reflect such change.
      • (B) The determination of a patent term adjustment under this subsection shall not be subject to appeal or challenge by a third party prior to the grant of the patent.

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37 C.F.R. 1.702   Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).

  • (a) Failure to take certain actions within specified time frames. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to:
    • (1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application;
    • (2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken under 35 U.S.C. 134 not later than four months after the date on which the reply was filed or the appeal was taken;
    • (3) Act on an application not later than four months after the date of a decision by the Patent Trial And Appeal Board under 35 U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146 where at least one allowable claim remains in the application; or
    • (4) Issue a patent not later than four months after the date on which the issue fee was paid under 35 U.S.C. 151 and all outstanding requirements were satisfied.
  • (b) Three-year pendency. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application, but not including:
    • (1) Any time consumed by continued examination of the application under 35 U.S.C. 132(b);
    • (2) Any time consumed by an interference or derivation proceeding under 35 U.S.C. 135(a);
    • (3) Any time consumed by the imposition of a secrecy order under 35 U.S.C. 181;
    • (4) Any time consumed by review by the Patent Trial and Appeal Board or a Federal court; or
    • (5) Any delay in the processing of the application by the Office that was requested by the applicant.
  • (c) Delays caused by interference and derivation proceedings. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to interference or derivation proceedings under 35 U.S.C. 135(a).
  • (d) Delays caused by secrecy order. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the application being placed under a secrecy order under 35 U.S.C. 181.
  • (e) Delays caused by successful appellate review. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to review by the Patent Trial and Appeal Board under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued under a decision in the review reversing an adverse determination of patentability. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision by the Patent Trial and Appeal Board as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of the applicant under § 1.703(e). A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
  • (f) The provisions of this section and §§ 1.703 through 1.705 apply only to original applications, except applications for a design patent, filed on or after May 29, 2000, and patents issued on such applications.

35 U.S.C. 154(b), was amended effective May 29, 2000, and further amended by Public Law 112-29, enacted on September 16, 2011, known as the Leahy-Smith America Invents Act (AIA) and by Public Law 112-274, enacted on January 14, 2013, known as the AIA Technical Corrections Act. All references to 35 U.S.C. 154(b) hereinafter are to 35 U.S.C. 154(b), as amended effective May 29, 2000 and as further amended by the Public Laws 112-29 and 112-274. 37 CFR 1.702-1.705 implement the provisions of 35 U.S.C. 154(b) and apply to utility and plant patent applications filed on or after May 29, 2000.

Due to various effective dates of changes to the provisions of 37 CFR 1.702-1.705, there are several versions currently in place. For example, there is a version of 37 CFR 1.702 that applies only to patents granted on or after January 14, 2013 and another version that applies to patents granted prior to January 14, 2013. For another example, there is a version of the provisions of 37 CFR 1.703(b)(4) and (e) that are only applicable to applications and patents in which a notice of allowance issued on or after September 17, 2012. Office personnel need to carefully consider the effective date provisions in the regulations in order to determine which version to apply to the particular application or patent under consideration.

37 CFR 1.702 sets forth the bases for patent term adjustment under 35 U.S.C. 154(b)(1).

37 CFR 1.702(a) indicates that a patent is entitled to patent term adjustment if the Office fails to perform certain acts of examination within specified time frames (35 U.S.C. 154(b)(1)(A)).

Effective September 16, 2012, the Board of Patent Appeals and Interferences has been re-designated the Patent Trial and Appeal Board. Accordingly, 37 CFR 1.702(a)(3) has been amended to reflect the re-designation of the patent appeal board.

For applications in which a patent was granted on or after January 14, 2013, 37 CFR 1.702(a)(1) provides patent term adjustment if the Office fails to mail either a notification under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 not later than 14 months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application. For applications filed on or after May 29, 2000 in which the patent was granted prior to January 14 2013, the fourteen month measurement in international applications is based upon the date that the application fulfilled the requirements of 35 U.S.C. 371 and not the date the national stage commenced.

37 CFR 1.702(b) indicates that a patent is entitled to patent term adjustment if, subject to a number of limitations, the Office fails to issue a patent within three years of the actual filing date of the application (35 U.S.C. 154(b)(1)(B)). In the case of an international application, the phrase “actual filing date of the application in the United States” means the date the national stage commenced under 35 U.S.C. 371(b) or (f) . See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 Fed. Reg. 56366, 56382-84, (Sept. 18, 2000), 1239 Off. Gaz. Pat. Office 14, 28-30 (Oct. 3, 2000). On January 14, 2013 Section 1(h)(1)(B) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(1)(B) to change “the actual filing date of the application in the United States” to “ the actual filing date of the application under section 111(a) in the United States, or, in the case of an international application, the date of commencement of the national stage under section 371 in the international application.” The clarification of the meaning of the phrase “actual filing date of the application in the United States” did not require a change to the language of 37 CFR 1.702(b) because the Office had interpreted, by regulation, the language of the former 35 U.S.C. 154(b)(1)(B) to have the same meaning as the current 35 U.S.C. 154(b)(1)(B), as discussed above. See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 Fed. Reg. 56366, 56382-84, (Sept. 18, 2000), 1239 Off. Gaz. Pat. Office 14, 28-30 (Oct. 3, 2000). See also Revisions to Patent Term Adjustment, 78 Fed. Reg. 19416, 19417 (Apr. 1, 2013), 1389 Off. Gaz. Pat. Office 224 (Apr. 23, 2013).

Effective on September 16, 2012, 37 CFR 1.702(b)(2) was amended to reflect the statutory change in section 3(i) of the AIA that replaced interference proceedings with derivation proceedings for some applications. In addition, section 3(j) of the AIA re-designated the title “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board” in 35 U.S.C. 134, 145, 146, 154, and 305. Accordingly, 37 CFR 1.702(b)(4) was amended to reflect the re-designation of the title of the Board. See Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 46615 (August 6, 2012).

37 CFR 1.702(c) also indicates that a patent is entitled to patent term adjustment if the issuance of the patent was delayed by an interference proceeding (35 U.S.C. 154(b)(1)(C)(i)). Effective September 16, 2012, 37 CFR 1.702(c) was amended to reflect the statutory change in section 3(i) of the AIA that replaced interference proceedings with derivation proceedings for certain applications. Specifically, 37 CFR 1.702(c) added derivation proceedings to the guarantees of adjustment for Office delays. In addition, section 3(j) of the AIA redesignated the title “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board” in 35 U.S.C. 134, 145, 146, 154, and 305. 37 CFR 1.702(d) indicates that a patent is entitled to patent term adjustment if the issuance of the patent was delayed by the application being placed under a secrecy order under 35 U.S.C. 181 (35 U.S.C. 154(b)(1)(C)(ii)). 37 CFR 1.702(e) indicates that a patent is entitled to patent term adjustment if the issuance of the patent was delayed by successful appellate review under 35 U.S.C. 134, 141, or 145 (35 U.S.C. 154(b)(1)(C)(iii)).

Effective May 24, 2004, 37 CFR 1.702(e) was amended to indicate that certain remands by the Board of Patent Appeals and Interferences shall be considered “a decision in the review reversing an adverse determination of patentability” for patent term adjustment purposes. Effective September 16, 2012, 37 CFR 1.702(e) was amended to implemented section (3)(j) of the AIA by re-designating the title “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board”.

37 CFR 1.702(f) provides that the provisions of 37 CFR 1.702 through 1.705 apply only to original (i.e., non-reissue) applications, except applications for a design patent, filed on or after May 29, 2000, and patents issued on such applications. Since a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is a new (continuing) application, a CPA filed on or after May 29, 2000, and before July 14, 2003, is entitled to the benefits of the patent term adjustment provisions of 35 U.S.C. 154(b) and 37 CFR 1.702 through 1.705. Since a request for continued examination (RCE) filed under 35 U.S.C. 132(b) and 37 CFR 1.114 is not a new application (it is a submission in a previously filed application), filing an RCE in an application filed before May 29, 2000, does not cause that application to be entitled to the benefits of the patent term adjustment provisions of 35 U.S.C. 154(b) and 37 CFR 1.702 through 1.705.

37 C.F.R. 1.703   Period of adjustment of patent term due to examination delay.

  • (a) The period of adjustment under § 1.702(a) is the sum of the following periods:
    • (1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
    • (2) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply under § 1.111 was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
    • (3) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply in compliance with § 1.113(c) was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
    • (4) The number of days, if any, in the period beginning on the day after the date that is four months after the date an appeal brief in compliance with § 41.37 was filed and ending on the date of mailing of any of an examiner’s answer under § 41.39, an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
    • (5) The number of days, if any, in the period beginning on the day after the date that is four months after the date of a final decision by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where at least one allowable claim remains in the application and ending on the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first; and
    • (6) The number of days, if any, in the period beginning on the day after the date that is four months after the date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued.
  • (b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
    • (1) The number of days, if any, in the period beginning on the date on which a request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date the patent was issued;
    • (2)
      • (i) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
      • (ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension;
    • (3)
      • (i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
      • (ii) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 in the application under secrecy order and ending on the date the secrecy order was removed;
      • (iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
      • (iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151; and,
    • (4) The number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date that jurisdiction by the Patent Trial and Appeal Board ends under § 41.35(b) of this chapter or the date of the last decision by a Federal court in an appeal under 35 U.S.C. 141 or civil action under 35 U.S.C. 145, whichever is later.
  • (c) The period of adjustment under § 1.702(c) is the sum of the following periods, to the extent that the periods are not overlapping:
    • (1) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
    • (2) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
  • (d) The period of adjustment under § 1.702(d) is the sum of the following periods, to the extent that the periods are not overlapping:
    • (1) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
    • (2) The number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under § 41.39 in the application under secrecy order and ending on the date the secrecy order was removed;
    • (3) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
    • (4) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151.
  • (e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the by the Patent Trial and Appeal Board under § 41.45(a) of this chapter and ending on the date of a final decision in favor of applicant by the Patent Trial and Appeal Board or a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
  • (f) The adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay attributable to the grounds specified in § 1.702 overlap, the period of adjustment granted under this section shall not exceed the actual number of days the issuance of the patent was delayed. The term of a patent entitled to adjustment under § 1.702 and this section shall be adjusted for the sum of the periods calculated under paragraphs (a) through (e) of this section, to the extent that such periods are not overlapping, less the sum of the periods calculated under § 1.704. The date indicated on any certificate of mailing or transmission under § 1.8 shall not be taken into account in this calculation.
  • (g) No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the expiration date specified in the disclaimer.

On September 16, 2012, 37 CFR 1.703 was amended to reflect the statutory change in section 3(i) of the AIA that replaced interference proceedings with derivation proceedings for certain applications. See AIA section 3(n). 37 CFR 1.702(c) added derivation proceedings to the guarantees of adjustment for Office delays. In addition, section 3(j) of the AIA redesignated the “Board of Patent Appeals and Interferences” as “ Patent Trial and Appeal Board” in 35 U.S.C. 134, 145, 146, 154, and 305. 37 CFR 1.703(a)(5) was amended to reflect the change to the title of the Patent Board and 37 CFR 1.703(b)(2), (b)(3), (c)(1), and (d)(3) were amended to reflect the addition of derivation proceedings to the rules providing parent term adjustment for Office delay.

Effective September 17, 2012, any application that receives a notice of allowance on or after such date and issues as a patent, is entitled to patent term adjustment under 37 CFR 1.702(e) for the sum of the number of days, if any, in the period beginning on the date on which jurisdiction passes to the Patent Trial and Appeal Board and ends on the date of a final decision in favor of applicant by the Patent Trial and Appeal Board or a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. See Revisions of Patent Term Adjustment Provisions Relating to Appellate Review, 77 Fed. Reg. 49354 (August 16, 2012).

Effective September 17, 2012, any application that receives a notice of allowance on or after such date and issues as a patent, the three year delay under 37 CFR 1.703(b) does not include the number of days, if any, in the period beginning on the date which jurisdiction passes to the Patent Trial and Appeal Board under 37 CFR 41.35(a) to the date that the jurisdiction byof the Patent Trial and Appeal Board ends under 37 CFR 41.35(b) or the date of the last decision by the Federal court in an appeal under 35 U.S.C. 141 or civil action under 35 U.S.C. 145.

The Office will also apply the changes to 37 CFR 1.703 in any timely patent term adjustment reconsideration proceeding that is initiated on or after September 17, 2012. To allow patentees to take advantage of changes to this provision relating to appellate review, the Office will consider the following timely-filed proceedings to be eligible "patent term adjustment reconsideration proceeding" if initiated on or after September 17, 2012:

  • (1) Reconsideration proceedings initiated pursuant to a remand from a timely filed civil action in Federal court;
  • (2) reconsideration proceedings initiated pursuant to a timely request for reconsideration of the patent term adjustment indicated in the patent under 37 CFR 1.705(d) (2012) in which the patentee argues that the change to 37 CFR 1.703 in this final rule is applicable to his or her patent; and
  • (3) reconsideration proceedings initiated pursuant to a request for reconsideration that seeks reconsideration of the Office’s decision under 37 CFR 1.705(d) (2012) regarding patent term adjustment under the Office’s former interpretation of the appellate review language of 35 U.S.C. 154(b)(1)(B)(ii) and (C)(iii), if such request is filed within two months of the date of the decision for which reconsideration is requested. See 37 CFR 1.181(f).

For applications in which the patent was granted on or after January 14, 2013, 37 CFR 1.703(a)(1) provides patent term adjustment if the Office fails to mail at least one of a notification under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 not later than 14 months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commence under 35 U.S.C. 371(b) or (f) in in an international application. For applications filed on or after May 29, 2000 in which the patent was granted prior to January 14, 2013, the fourteen month measurement in international applications is based upon the date that application fulfilled the requirements of 35 U.S.C. 371 and not the date the national stage commenced.

37 C.F.R. 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.
  • (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 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 date after the date the issue fee was due and ending on the earlier of:
      • (i) The date of mailing of the decision reviving the application or accepting late payment of the issue fee; or
      • (ii) 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;
    • (4) Failure to file a petition to withdraw the holding of abandonment or to revive an application within two months from the mailing date 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 mailing date 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 lesser of:
      • (i) 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
      • (ii) Four months;
    • (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 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 lesser of:
      • (i) 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
      • (ii) Four months;
    • (10) Submission of an amendment under § 1.312 or other paper 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 lesser of:
      • (i) The number of days, if any, beginning on the date the amendment under § 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 § 1.312 or such other paper; or
      • (ii) Four months;
    • (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; and
    • (12) 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 if it 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 any 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 (d)(1) of this section is not extendible.
  • (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.

Section 3(j) of the AIA redesignated the title “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board” in 35 U.S.C. 134, 145, 146, 154, and 305. Effective September 16, 2012, 37 CFR 1.704(c)(9) was amended to reflect the change to the title of the Board.

Effective December 1, 2011, 37 CFR 1.704(d) was amended to allow the diligent applicant to avoid patent term adjustment reduction for an IDS submission that results from a communication from the Office if submitted within 30 days of receipt of the action by any individual designated in 37 CFR 1.56(c). See Revision of Patent Term Adjustment Provisions Relating to Information Disclosure Statements, 76 Fed. Reg. 74700 (Dec. 1, 2011). Previously, this section only allowed a diligent applicant to avoid patent term adjustment reduction if the IDS was cited as a result from a foreign patent Office.

Effective September 17, 2012, 37 CFR 1.704(c)(11) was amended to provide that failure to file an appeal brief in compliance with 37 CFR 41.37 within three months from the date that the notice of appeal was filed would constitute a failure to engage in reasonable efforts to conclude processing or examination of the application. The amended rule is applicable with respect to the filing of an appeal brief in any application (other than design or reissue applications) in which the notice of appeal is filed on or after September 17, 2012.

Effective September 17, 2012, the provision previously labeled as 1.704(c)(11) is located in 37 CFR 1.704(c)(12).

37 C.F.R. 1.705   Patent term adjustment determination

  • (a) The patent will include notification of any patent term adjustment under 35 U.S.C. 154(b).
  • (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.
  • (c) Any requests 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 mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request 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 reduced pursuant to § 1.704(b) must also 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.
  • (d) No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.

Any patent granted on or after January 14, 2013, is subject to amended 37 CFR 1.705.

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