MPEP § 2732 — MPEP § 2732
Current through: 2022-07-01

2732-Reduction of Period of Adjustment of Patent Term 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2700 

 Section 2732 
 

 
 
 
 
 
 2732 Reduction of Period of Adjustment of Patent Term [R-01.2024]

 [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. 

 
 (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 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; 
 

 (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. 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. 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;
 

 (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.
 

 
 

 (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
 (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.
 

 (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) . 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. 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. 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.
 

 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. 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) . 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. 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. 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) .
 

 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. 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. 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. 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. 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. 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. 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. 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. 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. 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.). 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 (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. 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. 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.
 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. 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. 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) . 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 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. 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.
 

 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. 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). 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) . 
 

 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.
 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). 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. 
 

 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.
 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. 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:
 

 
 (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). 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 . 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. 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.
 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. 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. 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.
 

 
 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 (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. 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. 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 (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.
 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 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] 

 

 

 
 

 
 

 

 

 

 
 
 
 2701-Patent Term 

 2702-2709-[Reserved] 

 2710-Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154 

 2711-2719-[Reserved] 

 2720-Applications Filed Between June 8, 1995, and May 28, 2000 

 2721-2729-[Reserved] 

 2730-Applications Filed on or After May 29, 2000; Grounds for Adjustment 

 2731-Period of Adjustment 

 2732-Reduction of Period of Adjustment of Patent Term 

 2733-Patent Term Adjustment Determination 

 2734-Application for Patent Term Adjustment; Due Care Showing 

 2735-[Reserved] 

 2736-Third-Party Papers 

 2737-2749-[Reserved] 

 2750-Patent Term Extension for Delays at other Agencies under 35 U.S.C. 156 

 2751-Eligibility Requirements 

 2752-Patent Term Extension Applicant 

 2753-Application Contents 

 2754-Filing Date 
 2754.01-Deadline for Filing an Application Under 35 U.S.C. 156(d)(1) 

 2754.02-Filing Window for an Application Under 35 U.S.C. 156(d)(5) 

 2754.03-[Removed and Reserved] 

 
 

 2755-Eligibility Determination 
 2755.01-Interim Extension of Patent Term During the Processing of the Application 

 2755.02-Interim Extension of Patent Term Before Product Approval 

 
 

 2756-Correspondence Between the USPTO and the Regulatory Agency 

 2757-Regulatory Agency Determination of the Length of the Regulatory Review Period 
 2757.01-Due Diligence Determination 

 
 

 2758-Notice of Final Determination - Calculation of Patent Term Extension 

 2759-Certificate of Extension of Patent Term 

 2760-Trade Secret, Confidential, and Protective Order Material 

 2761-Multiple Applications for Extension of Term of the Same Patent or of Different Patents for the Same Regulatory Review Period
 for a Product 

 2762-Duty of Disclosure in Patent Term Extension Proceedings 
 2762.01-Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings 

 
 

 2763-Limitation of Third-Party Participation 

 2764-Express Withdrawal of Application for Extension of Patent Term 

 2765-Petition for Stay in Processing of Patent Term Extension Application 

 2766-Processing of Patent Term Extension Applications When Reissue Has Been Filed 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:49