MPEP § 2720 — MPEP § 2720
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2700 

 Section 2720 
 

 
 
 
 
 
 2720 Applications Filed Between June 8, 1995, and May 28,
 2000 [R-08.2017]
 

 
 Former 35 U.S.C. 154 
 Contents and term of patent. 

 *****

 
 (b) TERM EXTENSION.—
 
 (1) INTERFERENCE DELAY OR SECRECY ORDERS.—If the issue of an
 original patent is delayed due to a proceeding under section 135(a) of this
 title, or because the application for patent is placed under an order
 pursuant to section 181 of this title, the term of the patent shall be
 extended for the period of delay, but in no case more than 5 years.
 

 (2) EXTENSION FOR APPELLATE REVIEW. —If the issue of a patent
 is delayed due to appellate review by the Board of Patent Appeals and
 Interferences or by a Federal court and the patent is issued pursuant to a
 decision in the review reversing an adverse determination of patentability,
 the term of the patent shall be extended for a period of time but in no case
 more than 5 years. A patent shall not be eligible for extension under this
 paragraph if it is subject to a terminal disclaimer due to the issue of
 another patent claiming subject matter that is not patentably distinct from
 that under appellate review.
 

 (3) LIMITATIONS.—The period of extension referred to in
 paragraph (2)—
 
 (A) shall include any period beginning on the date on
 which an appeal is filed under section 134 or 141 of this title, or on
 which an action is commenced under section 145 of this title, and
 ending on the date of a final decision in favor of the applicant;
 

 (B) shall be reduced by any time attributable to
 appellate review before the expiration of 3 years from the filing date
 of the application for patent; and
 

 (C) shall be reduced for the period of time during which
 the applicant for patent did not act with due diligence, as determined
 by the Commissioner.
 

 
 

 (4) LENGTH OF EXTENSION.—The total duration of all extensions
 of a patent under this subsection shall not exceed 5 years.
 

 
 

 
 *****

 

 
 37 CFR 1.701 Extension of patent term due to examination delay under the Uruguay Round
 Agreements Act (original applications, other than designs, filed on or after June 8,
 1995, and before May 29, 2000). 

 
 (a) A patent, other than for designs, issued on an application filed
 on or after June 8, 1995, is entitled to extension of the patent term if the
 issuance of the patent was delayed due to:
 
 (1) Interference or derivation proceedings under
 35
 U.S.C. 135(a) ; and/or
 

 (2) The application being placed under a secrecy order under
 35
 U.S.C. 181 ; and/or
 

 (3) Appellate review by the Patent Trial and Appeal Board or by
 a Federal court under 35 U.S.C. 141 or
 145 , if the patent was issued pursuant to a decision
 in the review reversing an adverse determination of patentability and if the
 patent is not subject to a terminal disclaimer due to the issuance of
 another patent claiming subject matter that is not patentably distinct from
 that under appellate review. If an application is remanded by a panel of the
 Patent Trial and Appeal Board and the remand is the last action by a panel
 of the Patent Trial and Appeal Board prior to the mailing of a notice of
 allowance under 35 U.S.C. 151 in the
 application, the remand shall be considered a decision in the review
 reversing an adverse determination of patentability as that phrase is used
 in 35
 U.S.C. 154(b)(2) as amended by section 532(a) of the
 Uruguay Round Agreements Act, Public Law 103-465, 108 Stat. 4809, 4983-85
 (1994), and a final decision in favor of the applicant under paragraph
 (c)(3) of this section. A remand by a panel of the Patent Trial and Appeal
 Board shall not be considered a decision in the review reversing an adverse
 determination of patentability as provided in this paragraph if there is
 filed a request for continued examination under 35 U.S.C.
 132(b) that was not first preceded by the mailing,
 after such remand, of at least one of an action under 35 U.S.C.
 132 or a notice of allowance under 35 U.S.C.
 151. 

 
 

 (b) The term of a patent entitled to extension under paragraph (a) of
 this section shall be extended for the sum of the periods of delay calculated
 under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, to the extent
 that these periods are not overlapping, up to a maximum of five years. The
 extension will run from the expiration date of the patent.
 

 (c)
 
 (1) The period of delay under paragraph (a)(1) of this section
 for an application is the sum of the following periods, to the extent that
 the periods are not overlapping:
 
 (i) With respect to each interference or derivation
 proceeding in which the application was involved, the number of days,
 if any, in the period beginning on the date the interference or
 derivation proceeding was instituted to involve the application in the
 interference or derivation proceeding and ending on the date that the
 interference or derivation proceeding was terminated with respect to
 the application; and
 

 (ii) The number of days, if any, in the period beginning
 on the date prosecution in the application was suspended by the Patent
 and Trademark Office due to interference or derivation proceedings
 under 35 U.S.C. 135(a) 
 not involving the application and ending on the date of the
 termination of the suspension.
 

 
 

 (2) The period of delay under paragraph (a)(2) of this section
 for an application is the sum of the following periods, to the extent that
 the periods are not overlapping:
 
 (i) The number of days, if any, the application was
 maintained in a sealed condition under 35 U.S.C.
 181 ;
 

 (ii) The number of days, if any, in the period beginning
 on the date of mailing of an examiner’s answer under §
 41.39 of this title in the application under
 secrecy order and ending on the date the secrecy order and any renewal
 thereof was removed;
 

 (iii) The number of days, if any, in the period beginning
 on the date applicant was notified that an interference or derivation
 proceeding would be instituted but for the secrecy order and ending on
 the date the secrecy order and any renewal thereof was removed;
 and
 

 (iv) The number of days, if any, in the period beginning
 on the date of notification under § 5.3(c) and
 ending on the date of mailing of the notice of allowance under
 §
 1.311 .
 

 
 

 (3) The period of delay under paragraph (a)(3) of this section
 is the sum of the number of days, if any, in the period beginning on the
 date on which an appeal to the Patent Trial and Appeal Board was filed under
 35
 U.S.C. 134 and ending on the date of a final decision
 in favor of the applicant by the Patent Trial and Appeal Board or by a
 Federal court in an appeal under 35 U.S.C. 141 or a civil
 action under 35 U.S.C. 145 .
 

 
 

 (d) The period of delay set forth in paragraph (c)(3) shall be
 reduced by:
 
 (1) Any time during the period of appellate review that
 occurred before three years from the filing date of the first national
 application for patent presented for examination; and
 

 (2) Any time during the period of appellate review, as
 determined by the Director, during which the applicant for patent did not
 act with due diligence. In determining the due diligence of an applicant,
 the Director may examine the facts and circumstances of the applicant’s
 actions during the period of appellate review to determine whether the
 applicant exhibited that degree of timeliness as may reasonably be expected
 from, and which is ordinarily exercised by, a person during a period of
 appellate review.
 

 
 

 (e) The provisions of this section apply only to original patents,
 except for design patents, issued on applications filed on or after June 8, 1995,
 and before May 29, 2000.
 

 
 

 The twenty-year term of a patent issuing from an application filed on or
 after June 8, 1995, and before May 29, 2000, may be extended for a maximum of five years
 for delays in the issuance of the patent due to interferences, secrecy orders and/or
 successful appeals to the Patent Trial and Appeal Board (Board) or the federal courts in
 accordance with 37 CFR
 1.701 . See former 35 U.S.C. 154(b) , as reproduced
 above. Extensions for successful appeals are limited in that the patent must not be subject
 to a terminal disclaimer. Further, the period of extension will be reduced by any time
 attributable to appellate review within three years of the filing date of the first
 national application for patent, and the period of extension for appellate review will be
 reduced by any time during which the applicant did not act with due diligence. The patent
 term extension that may be available under 35 U.S.C. 156 for premarket regulatory
 review is separate from and will be added to any extension that may be available under
 former and current 35
 U.S.C. 154 . See MPEP § 2750 et seq. 35 U.S.C.
 154(b) was amended, effective May 29, 2000, to provide for patent
 term adjustment for applications filed on or after May 29, 2000, but the provisions of
 former 35 U.S.C.
 154(b) , as reproduced above, continue to apply to applications filed
 between and including June 8, 1995 and May 28, 2000. 35 U.S.C. 154 also was amended
 effective September 16, 2012 and January 14, 2013.
 

 Examiners make no decisions regarding patent term extensions. Any patent
 term extension granted as a result of administrative delay pursuant to 37 CFR 1.701 will be
 printed on the face of the patent in generally the same location as the terminal disclaimer
 information. The term of a patent will be readily discernible from the face of the patent
 (i.e., from the filing date, continuing data, issue date and any patent term extensions
 printed on the patent). 
 

 If applicant disagrees with the patent term extension information printed
 on the front page of the patent, applicant may request review by way of a petition under
 37 CFR
 1.181 . If the petition is granted, a Certificate of Correction
 pursuant to 37 CFR
 1.322 will be issued. 
 

 Effective May 24, 2004, 37 CFR 1.701(a)(3) was amended to
 indicate that certain remands by the Board shall be considered “a decision in the review
 reversing an adverse determination of patentability” for patent term extension purposes. 
 

 Petitions and Certificates of Correction regarding patent term extension
 under former 35 U.S.C.
 154(b) should be addressed to Mail Stop Patent Ext., Commissioner for
 Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
 

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 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 20:49:40