MPEP § 2730 — MPEP § 2730
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 2700 

 Section 2730 
 

 
 
 
 
 
 2730 Applications Filed on or After May 29, 2000; Grounds for
 Adjustment [R-01.2024]
 

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

 *****

 
 (b) ADJUSTMENT OF PATENT TERM.— 
 
 (1) PATENT TERM GUARANTEES.— 
 
 (A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE
 RESPONSES.— Subject to the limitations under paragraph (2), if the
 issue of an original patent is delayed due to the failure of the
 Patent and Trademark Office to— 
 
 (i) provide at least one of the notifications under
 section 132 
 or a notice of allowance under section
 151 of this title not later than 14 months
 after— 
 
 (I) the date on which an application was
 filed under section
 111(a) ; or
 

 (II) the date of commencement of the national
 stage under section
 371 in an international
 application;
 

 
 

 (ii) respond to a reply under section
 132 , or to an appeal taken under
 section 134 ,
 within 4 months after the date on which the reply was filed or
 the appeal was taken;
 

 (iii) act on an application within 4 months after the
 date of a decision by the Patent Trial and Appeal Board under
 section 134 
 or 135 or a
 decision by a Federal court under section
 141 , 145 , or
 146 in a
 case in which allowable claims remain in the application; or
 

 (iv) issue a patent within 4 months after the date
 on which the issue fee was paid under section
 151 and all outstanding requirements were
 satisfied,
 

 
 

 the term of the patent shall be
 extended 1 day for each day after the end of the period specified in
 clause (i), (ii), (iii), or (iv), as the case may be, until the action
 described in such clause is taken.
 

 (B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION
 PENDENCY.— Subject to the limitations under paragraph (2), if the
 issue of an original patent is delayed due to the failure of the
 United States Patent and Trademark Office to issue a patent within
 3 years after the actual filing date of the application under
 section 111(a) in
 the United States, or, in the case of an international application,
 the date of commencement of the national stage under section
 371 in the international application, not
 including— 
 
 (i) any time consumed by continued examination of
 the application requested by the applicant under
 section
 132(b) ;
 

 (ii) any time consumed by a proceeding under
 section
 135(a) , any time consumed by the
 imposition of an order under section 181 ,
 or any time consumed by appellate review by the Patent Trial and
 Appeal Board or by a Federal court; or
 

 (iii) any delay in the processing of the application
 by the United States Patent and Trademark Office requested by
 the applicant except as permitted by paragraph (3)(C), 
 

 
 

 the term of the patent shall be
 extended 1 day for each day after the end of that 3-year period until
 the patent is issued.
 

 (C) GUARANTEE OF ADJUSTMENTS FOR DELAYS DUE TO DERIVATION
 PROCEEDINGS, SECRECY ORDERS, AND APPEALS.— Subject to the limitations
 under paragraph (2), if the issue of an original patent is delayed due
 to— 
 
 (i) a proceeding under section
 135(a) ;
 

 (ii) the imposition of an order under
 section 181 ;
 or
 

 (iii) appellate review by the Patent Trial and Appeal
 Board or by a Federal court in a case in which the patent was
 issued under a decision in the review reversing an adverse
 determination of patentability, the term of the patent shall be
 extended 1 day for each day of the pendency of the proceeding,
 order, or review, as the case may be.
 

 
 

 
 

 (2) LIMITATIONS.— 
 
 (A) IN GENERAL.— To the extent that periods of delay
 attributable to grounds specified in paragraph (1) overlap, the period
 of any adjustment granted under this subsection shall not exceed the
 actual number of days the issuance of the patent was delayed.
 

 (B) DISCLAIMED TERM.— No patent the term of which has
 been disclaimed beyond a specified date may be adjusted under this
 section beyond the expiration date specified in the disclaimer.
 

 (C) REDUCTION OF PERIOD OF ADJUSTMENT.— 
 
 (i) The period of adjustment of the term of a
 patent under paragraph (1) shall be reduced by a period equal to
 the period of time during which the applicant failed to engage
 in reasonable efforts to conclude prosecution of the
 application.
 

 (ii) With respect to adjustments to patent term made
 under the authority of paragraph (1)(B), an applicant shall be
 deemed to have failed to engage in reasonable efforts to
 conclude processing or examination of an application for the
 cumulative total of any periods of time in excess of 3 months
 that are taken to respond to a notice from the Office making any
 rejection, objection, argument, or other request, measuring such
 3-month period from the date the notice was given or mailed to
 the applicant.
 

 (iii) The Director shall prescribe regulations
 establishing the circumstances that constitute a failure of an
 applicant to engage in reasonable efforts to conclude processing
 or examination of an application.
 

 
 

 
 

 (3) PROCEDURES FOR PATENT TERM ADJUSTMENT DETERMINATION.— 
 
 (A) The Director shall prescribe regulations establishing
 procedures for the application for and determination of patent term
 adjustments under this subsection.
 

 (B) Under the procedures established under subparagraph
 (A), the Director shall— 
 
 (i) make a determination of the period of any
 patent term adjustment under this subsection, and shall transmit
 a notice of that determination no later than the date of
 issuance of the patent; and
 

 (ii) provide the applicant one opportunity to
 request reconsideration of any patent term adjustment
 determination made by the Director.
 

 
 

 (C) The Director shall reinstate all or part of the
 cumulative period of time of an adjustment under paragraph (2)(C) if
 the applicant, prior to the issuance of the patent, makes a showing
 that, in spite of all due care, the applicant was unable to respond
 within the 3-month period, but in no case shall more than three
 additional months for each such response beyond the original 3-month
 period be reinstated.
 

 (D) The Director shall proceed to grant the patent after
 completion of the Director’s determination of a patent term adjustment
 under the procedures established under this subsection,
 notwithstanding any appeal taken by the applicant of such
 determination.
 

 
 

 (4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION.— 
 
 (A) An applicant dissatisfied with the Director’s
 decision on the applicant’s request for reconsideration under
 paragraph (3)(B)(ii) shall have the exclusive remedy by a civil action
 against the Director filed in the United States District Court for the
 Eastern District of Virginia within 180 days after the date of the
 Director’s decision on the applicant’s request for reconsideration.
 Chapter 7 of title 5, United States Code, shall apply to such action.
 Any final judgment resulting in a change to the period of adjustment
 of the patent term shall be served on the Director, and the Director
 shall thereafter alter the term of the patent to reflect such
 change.
 

 (B) The determination of a patent term adjustment under
 this subsection shall not be subject to appeal or challenge by a third
 party prior to the grant of the patent.
 

 
 

 
 

 
 *****

 
 I. 37 CFR 1.702 - GROUNDS FOR
 ADJUSTMENT [Editor Note: The provision of 37 CFR
 1.702(a)(1) , as reproduced below, was effective on April 1,
 2013 and applies to patent applications granted on or after January 14,
 2013.] 

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

 
 (a) Failure to take certain actions within specified time
 frames. Subject to the provisions of 35 U.S.C. 154(b) and this
 subpart, the term of an original patent shall be adjusted if the issuance of
 the patent was delayed due to the failure of the Office to: 
 
 (1) Mail at least one of a notification under
 35
 U.S.C. 132 or a notice of allowance under
 35 U.S.C. 151 not later than fourteen months after
 the date on which the application was filed under 35 U.S.C.
 111(a) or the date the national stage commenced
 under 35 U.S.C. 371(b) or (f) 
 in an international application;
 

 (2) Respond to a reply under 35 U.S.C.
 132 or to an appeal taken under 35 U.S.C.
 134 not later than four months after the date on
 which the reply was filed or the appeal was taken; 
 

 (3) Act on an application not later than four months after
 the date of a decision by the Patent Trial And Appeal Board under
 35
 U.S.C. 134 or 135 or a decision by
 a Federal court under 35 U.S.C. 141 ,
 145 , or 146 where at least
 one allowable claim remains in the application; or 
 

 (4) Issue a patent not later than four months after the date
 on which the issue fee was paid under 35 U.S.C. 151 and all
 outstanding requirements were satisfied. 
 

 
 

 (b) Three-year pendency. Subject to the provisions of 35 U.S.C. 154(b) and this
 subpart, the term of an original patent shall be adjusted if the issuance of
 the patent was delayed due to the failure of the Office to issue a patent
 within three years after the date on which the application was filed under
 35 U.S.C.
 111(a) or the national stage commenced under
 35 U.S.C.
 371(b) or (f) in an international
 application, but not including: 
 
 (1) Any time consumed by continued examination of the
 application under 35 U.S.C. 132(b) ;
 
 

 (2) Any time consumed by an interference or derivation
 proceeding under 35 U.S.C. 135(a) ;
 
 

 (3) Any time consumed by the imposition of a secrecy order
 under 35 U.S.C. 181 ;
 

 (4) Any time consumed by review by the Patent Trial and
 Appeal Board or a Federal court; or 
 

 (5) Any delay in the processing of the application by the
 Office that was requested by the applicant. 
 

 
 

 (c) Delays caused by interference and derivation proceedings. 
 Subject to the provisions of 35 U.S.C. 154(b) and this
 subpart, the term of an original patent shall be adjusted if the issuance of
 the patent was delayed due to interference or derivation proceedings under
 35 U.S.C.
 135(a) . 
 

 (d) Delays caused by secrecy order. Subject to the provisions of
 35 U.S.C.
 154(b) and this subpart, the term of an original patent
 shall be adjusted if the issuance of the patent was delayed due to the
 application being placed under a secrecy order under 35 U.S.C.
 181 . 
 

 (e) Delays caused by successful appellate review. Subject to the
 provisions of 35 U.S.C. 154(b) and this subpart, the term of an
 original patent shall be adjusted if the issuance of the patent was delayed due
 to review by the Patent Trial and Appeal Board under 35 U.S.C.
 134 or by a Federal court under 35 U.S.C.
 141 or 145 , if the patent was
 issued under a decision in the review reversing an adverse determination of
 patentability. If an application is remanded by a panel of the Patent Trial and
 Appeal Board and the remand is the last action by a panel of the Patent Trial
 and Appeal Board prior to the mailing of a notice of allowance under
 35 U.S.C.
 151 in the application, the remand shall be considered a
 decision by the Patent Trial and Appeal Board as that phrase is used in
 35 U.S.C.
 154(b)(1)(A)(iii) , a decision in the review reversing an
 adverse determination of patentability as that phrase is used in
 35 U.S.C.
 154(b)(1)(C)(iii) , and a final decision in favor of the
 applicant under § 1.703(e) . A remand by a
 panel of the Patent Trial and Appeal Board shall not be considered a decision
 in the review reversing an adverse determination of patentability as provided
 in this paragraph if there is filed a request for continued examination under
 35 U.S.C.
 132(b) that was not first preceded by the mailing, after
 such remand, of at least one of an action under 35 U.S.C.
 132 or a notice of allowance under 35 U.S.C.
 151 .
 

 (f) The provisions of this section and §§ 1.703 
 through 1.705 apply only to original applications, except
 applications for a design patent, filed on or after May 29, 2000, and patents
 issued on such applications. 
 

 
 

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

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

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

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

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

 For applications in which a patent was granted on or
 after January 14, 2013, 37 CFR 1.702(a)(1) provides patent
 term adjustment if the Office fails to mail either a notification under
 35 U.S.C.
 132 or notice of allowance under 35 U.S.C. 151 not
 later than 14 months after the date on which the application was filed under
 35 U.S.C.
 111(a) or the date the national stage commenced under
 35 U.S.C.
 371(b) or (f) in an international application.
 For applications filed on or after May 29, 2000 in which the patent was granted prior to
 January 14, 2013, the fourteen month measurement in international applications is based
 upon the date that the application fulfilled the requirements of 35 U.S.C. 371 and
 not the date the national stage commenced. See 37 CFR 1.702(a)(1)
 (pre-2013-04-01) .
 

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

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

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

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

 37 CFR
 1.702(f) provides that the provisions of 37 CFR 1.702 
 through 1.705 apply only to original (i.e., non-reissue) applications,
 except applications for design patents, filed on or after May 29, 2000, and patents
 issued on such applications. The term ‘‘original application’’ includes a continuing
 application (continuation, divisional, or continuation-in-part, whether the application
 is filed under 37
 CFR 1.53(b) or as a continued prosecution application under
 37 CFR
 1.53(d) ) and an international application under 35 U.S.C. 363 
 which has entered the national stage. See Cooper Techs. Co. v. Dudas, 
 536 F.3d 1330, 87 USPQ2d 1705 (Fed. Cir. 2008). In particular, since a continued
 prosecution application (CPA) filed under 37 CFR 1.53(d) is a new (continuing)
 application, a CPA filed on or after May 29, 2000, and before July 14, 2003, is entitled
 to the benefits of the patent term adjustment provisions of 35 U.S.C. 154(b) 
 and 37 CFR
 1.702 through 1.705 . Since a request for continued
 examination (RCE) filed under 35 U.S.C. 132(b) and
 37 CFR
 1.114 is not a new application (it is a submission in
 a previously filed application), filing an RCE in an application filed before May 29,
 2000, does not cause that application to be entitled to the benefits of the
 patent term adjustment provisions of 35 U.S.C. 154(b) and
 37 CFR
 1.702 through 1.705. In regard to international
 applications, such an application must have an international filing date on or after May
 29, 2000 in order for the provisions of 37 CFR 1.702 through
 1.705 to apply. The date on which an international application
 fulfills the requirements of 35 U.S.C. 371 (e.g., enters the
 national stage) is not the filing date of the international application. See
 35 U.S.C.
 363 . The term “design patents” includes patents issued from design
 applications filed under 35 U.S.C. 111 and international
 design applications filed under 35 U.S.C. 385 .
 

 II. 37 CFR 1.703 - PERIOD OF
 ADJUSTMENT [Editor Note: 37 CFR
 1.703(a)(1) , as reproduced below, includes amendments
 applicable only to patents granted on or after January 14, 2013 and 37 CFR 1.703(b)(4)
 and (e) , as reproduced below, include amendments applicable
 only to applications and patents in which a notice of allowance issued on or after
 September 17, 2012. See 37 CFR 1.703 (2012-09-17 thru
 2013-03-31) or 37 CFR 1.703 (pre-2012-09-17) for
 paragraph (a)(1) applicable to patents granted before January 14, 2013. See
 37
 CFR 1.703 (pre-2012-09-17) for paragraphs (b)(4) and (e) that
 apply if the notice of allowance was issued before September 17, 2012.] 

 
 37 CFR 1.703 Period of adjustment of patent term due to examination delay. 

 
 (a) The period of adjustment under §
 1.702(a) is the sum of the following periods: 
 
 (1) The number of days, if any, in the period beginning on
 the day after the date that is fourteen months after the date on which
 the application was filed under 35 U.S.C. 111(a) the
 date the national stage commenced under 35 U.S.C.
 371(b) or (f) in an
 international application and ending on the date of mailing of either an
 action under 35 U.S.C. 132 , or a
 notice of allowance under 35 U.S.C. 151 ,
 whichever occurs first; 
 

 (2) The number of days, if any, in the period beginning on
 the day after the date that is four months after the date a reply under
 §
 1.111 was filed and ending on the date of mailing
 of either an action under 35 U.S.C. 132 , or a
 notice of allowance under 35 U.S.C. 151 ,
 whichever occurs first; 
 

 (3) The number of days, if any, in the period beginning on
 the day after the date that is four months after the date a reply in
 compliance with § 1.113(c) was filed
 and ending on the date of mailing of either an action under
 35
 U.S.C. 132 , or a notice of allowance under
 35
 U.S.C. 151 , whichever occurs first; 
 

 (4) The number of days, if any, in the period beginning on
 the day after the date that is four months after the date an appeal brief
 in compliance with § 41.37 was filed and
 ending on the date of mailing of any of an examiner’s answer under
 §
 41.39 , an action under 35 U.S.C.
 132 , or a notice of allowance under
 35 U.S.C. 151 , whichever occurs first; 
 

 (5) The number of days, if any, in the period beginning on
 the day after the date that is four months after the date of a final
 decision by the Patent Trial and Appeal Board or by a Federal court in an
 appeal under 35 U.S.C. 141 or a
 civil action under 35 U.S.C. 145 or
 146 where at least one allowable claim remains in
 the application and ending on the date of mailing of either an action
 under 35 U.S.C. 132 or a notice of allowance under
 35
 U.S.C. 151 , whichever occurs first; and 
 

 (6) The number of days, if any, in the period beginning on
 the day after the date that is four months after the date the issue fee
 was paid and all outstanding requirements were satisfied and ending on
 the date a patent was issued. 
 

 
 

 (b) The period of adjustment under §
 1.702(b) is the number of days, if any, in the period
 beginning on the day after the date that is three years after the date on which
 the application was filed under 35 U.S.C. 111(a) or the
 national stage commenced under 35 U.S.C. 371(b) or (f) in
 an international application and ending on the date a patent was issued, but
 not including the sum of the following periods: 
 
 (1) The number of days, if any, in the period beginning on
 the date on which any request for continued examination of the
 application under 35 U.S.C. 132(b) was
 filed and ending on the date of mailing of the notice of allowance under
 35
 U.S.C. 151 ; 
 

 (2)
 
 (i) The number of days, if any, in the period
 beginning on the date an interference or derivation proceeding was
 instituted to involve the application in the interference or
 derivation proceeding under 35
 U.S.C. 135(a) and ending on the date that the
 interference or derivation proceeding was terminated with respect
 to the application; and
 

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

 
 

 (3)
 
 (i) The number of days, if any, the application was
 maintained in a sealed condition under 35 U.S.C.
 181 ;
 

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

 (iii) The number of days, if any, in the period
 beginning on the date applicant was notified that an interference
 or derivation proceeding under 35
 U.S.C. 135(a) would be instituted but for the
 secrecy order and ending on the date the secrecy order was removed;
 and 
 

 (iv) The number of days, if any, in the period
 beginning on the date of notification under §
 5.3(c) of this chapter and ending on the date
 of mailing of the notice of allowance under 35 U.S.C.
 151 ; and, 
 

 
 

 (4) The number of days, if any, in the period beginning on
 the date on which jurisdiction over the application passes to the Patent
 Trial and Appeal Board under § 41.35(a) of this
 chapter and ending on the date that jurisdiction by the Patent Trial and
 Appeal Board ends under § 41.35(b) of this
 chapter or the date of the last decision by a Federal court in an appeal
 under 35 U.S.C. 141 or
 civil action under 35 U.S.C. 145 ,
 whichever is later. 
 

 
 

 (c) The period of adjustment under §
 1.702(c) is the sum of the following periods, to the
 extent that the periods are not overlapping: 
 
 (1) The number of days, if any, in the period beginning on
 the date an interference or derivation proceeding was instituted to
 involve the application in the interference or derivation proceeding
 under 35 U.S.C. 135(a) and
 ending on the date that the interference or derivation proceeding was
 terminated with respect to the application; and 
 

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

 
 

 (d) The period of adjustment under §
 1.702(d) is the sum of the following periods, to the
 extent that the periods are not overlapping:
 
 (1) The number of days, if any, the application was
 maintained in a sealed condition under 35 U.S.C.
 181 ; 
 

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

 (3) The number of days, if any, in the period beginning on
 the date applicant was notified that an interference or derivation
 proceeding under 35 U.S.C. 135(a) 
 would be instituted but for the secrecy order and ending on the date the
 secrecy order was removed; and 
 

 (4) The number of days, if any, in the period beginning on
 the date of notification under § 5.3(c) of this
 chapter and ending on the date of mailing of the notice of allowance
 under 35 U.S.C. 151 . 
 

 
 

 (e) The period of adjustment under §
 1.702(e) is the sum of the number of days, if any, in the
 period beginning on the date on which jurisdiction over the application passes
 to the Patent Trial and Appeal Board under §
 41.45(a) of this chapter and ending on the date of a
 final decision in favor of applicant by the Patent Trial and Appeal Board or a
 Federal court in an appeal under 35 U.S.C. 141 or a civil
 action under 35 U.S.C. 145 . 
 

 (f) The adjustment will run from the expiration date of the patent
 as set forth in 35 U.S.C. 154(a)(2) . To the
 extent that periods of delay attributable to the grounds specified in
 §
 1.702 overlap, the period of adjustment granted under
 this section shall not exceed the actual number of days the issuance of the
 patent was delayed. The term of a patent entitled to adjustment under
 §
 1.702 and this section shall be adjusted for the sum of
 the periods calculated under paragraphs (a) through (e) of this section, to the
 extent that such periods are not overlapping, less the sum of the periods
 calculated under § 1.704 . The date indicated
 on any certificate of mailing or transmission under § 1.8 
 shall not be taken into account in this calculation.
 

 (g) No patent, the term of which has been disclaimed beyond a
 specified date, shall be adjusted under § 1.702 and this section
 beyond the expiration date specified in the disclaimer. 
 

 
 

 37 CFR
 1.703 specifies the period of adjustment if a patent is entitled
 to patent term adjustment under 35 U.S.C. 154(b)(1) and
 37 CFR
 1.702 . See MPEP § 2731 for more information.
 

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

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

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

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

 
 (1) reconsideration proceedings initiated pursuant to a
 remand from a timely filed civil action in federal court;
 

 (2) reconsideration proceedings initiated pursuant to a
 timely request for reconsideration of the patent term adjustment indicated in the
 patent under 37 CFR 1.705(d) (2012) in
 which the patentee argues that the change to 37 CFR
 1.703 in this final rule is applicable to their patent;
 and
 

 (3) reconsideration proceedings initiated pursuant to a
 request for reconsideration that seeks reconsideration of the Office’s decision
 under 37 CFR 1.705(d) (2012)
 regarding patent term adjustment under the Office’s former interpretation of the
 appellate review language of 35 U.S.C. 154(b)(1)(B)(ii) and
 (C)(iii) , if such request is filed within two months of the
 date of the decision for which reconsideration is requested. See 37 CFR
 1.181(f) .
 

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

 Effective January 9, 2015, 37 CFR
 1.703(b)(1) was amended to provide that the time consumed by
 continued examination of the application under 35 U.S.C. 132(b) is the number of
 days, if any, in the period beginning on the date on which any request for continued
 examination of the application under 35 U.S.C. 132(b) was filed and
 ending on the date of mailing of the notice of allowance under 35 U.S.C. 151 .
 This change is effective for any patent granted before, on, or after January 9, 2015.
 See MPEP §
 2731 for more information. See also Novartis AG v.
 Lee, 740 F.3d 593, 109 USPQ2d 1385 (Fed. Cir. 2014).
 

 III. 37 CFR 1.704 - REDUCTION OF
 ADJUSTMENT [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 no
 notice of appeal filed on or after September 17, 2012, see 37 CFR 1.704
 (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 was 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 any individual designated in §
 1.56(c) more than thirty days prior to the
 filing of the information disclosure statement; or
 

 (ii) Is a communication that was issued
 by a patent office in a counterpart foreign or international
 application or by the Office, and this communication was not
 received by any individual designated in §
 1.56(c) more than thirty days prior to the
 filing of the information disclosure statement.
 

 
 

 (2) The thirty-day period set forth in
 paragraph (d)(1) of this section is not 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.
 

 
 

 Section 1.704 implements the provisions of
 35 U.S.C.
 154(b)(2)(C) . 35 U.S.C. 154(b)(2)(C) specifies
 certain circumstances as constituting a failure of an applicant to engage in reasonable
 efforts to conclude processing or examination of an application and also provides for
 the Office 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. For more information, see MPEP § 2732 .
 

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

 Effective December 1, 2011, 37 CFR
 1.704(d) was amended to allow the diligent applicant to avoid
 patent term adjustment reduction for an information disclosure statement (IDS)
 submission that results from a communication from the Office if submitted within 30 days
 of receipt of the communication by any individual designated in 37 CFR
 1.56(c) . See Revision of Patent Term Adjustment Provisions
 Relating to Information Disclosure Statements, 76 FR 74700 (December 1,
 2011). Previously, this section only allowed a diligent applicant to avoid patent term
 adjustment reduction if the IDS was cited as a result from a foreign patent Office.
 Effective March 10, 2015, 37 CFR 1.704(d)(1) provides 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
 37 CFR
 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) .
 

 37 CFR 1.704(d) statements filed on
 or after July 17, 2023, must be submitted on the Office form PTO/SB/133, “Patent Term
 Adjustment Statement Under 37 CFR 1.704(d),” using the document code PTA.IDS. See
 37 CFR
 1.704(d)(3) . For statements not submitted via the USPTO patent
 electronic filing system, inclusion of the document code PTA.IDS on the form PTO/SB/133
 satisfies the requirement to use the document code. Otherwise, the application will be
 treated as if no 37 CFR 1.704(d) statement had been
 filed unless a request for reconsideration of the patent term adjustment, in compliance
 with 37
 CFR 1.705(b) , is filed establishing that the IDS was accompanied
 by a 37
 CFR 1.704(d) statement.
 

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

 Prior to September 17, 2012, 37 CFR
 1.704(c)(11) contained a provision that further prosecution via a
 continuing application is a circumstance constituting a failure of an applicant to
 engage in reasonable efforts to conclude processing or examination of an application.
 Effective September 17, 2012, this provision previously labeled as 37 CFR 1.704(c)(11)
 was labelled 37 CFR 1.704(c)(12) . Effective
 December 18, 2013, this same provision was amended to be located in 37 CFR
 1.704(c)(13) , and a new provision regarding the failure to provide
 an application in condition for examination, as defined in 37 CFR
 1.704(f) , was added as 37 CFR 1.704(c)(12) . Effective March
 10, 2015, the same provision formerly labelled as 37 CFR
 1.704(c)(13) is now labelled as 37 CFR
 1.704(c)(14) .
 

 Effective for applications filed under 35 U.S.C.
 111 on or after December 18, 2013 and international applications
 in which the national stage was commenced under 35 U.S.C. 371 on or after December
 18, 2013, several changes to 37 CFR 1.704 were made.
 37 CFR 1.704(c)(11) was modified to
 delete the “and” at the end of the paragraph because it is no longer the penultimate
 paragraph of 37 CFR 1.704 . On December 18, 2013,
 37 CFR
 1.704(c)(12) was added to provide for a reduction in any earned
 patent term adjustment in the situation in which an application is not in condition for
 examination within eight months from when an application under 35 U.S.C.
 111 was filed or when an international application commenced the
 national stage under 35 U.S.C. 371(b) or (f) . Effective March 10, 2015, this provision
 was amended to be labelled as 37 CFR 1.704(c)(13) . On December 18,
 2013, 37
 CFR 1.704(f) was added to define when an application is “in
 condition for examination” for purposes of 37 CFR 1.704(c)(13) .
 37 CFR
 1.704(f) was amended in the final rule Standard for
 Presentation of Nucleotide and Amino Acid Sequence Listings Using eXtensible Markup
 Language (XML) in Patent Applications To Implement WIPO Standard ST.26; Incorporation
 by Reference, 87 FR 30806 (May 20, 2022) and this amendment is effective
 for all applications filed before, on, or after July 1, 2022. 
 

 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 include 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 MPEP § 2732 for more
 information.
 

 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)(4), (c)(6), (c)(9), and
 (c)(10) were 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). Specifically,
 37 CFR
 1.704(c)(2) was amended to end the reduction for applicant delay
 on the earlier of the date a request to terminate the deferral was filed or the date the
 patent was issued. 37 CFR 1.704(c)(3) was amended to
 end the reduction for applicant delay on the date the grantable petition to revive the
 application or accept late payment of the issue fee was filed. 37 CFR
 1.704(c)(6) was amended to begin the reduction for applicant delay
 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 to end the reduction for applicant delay on the date the
 preliminary amendment or other preliminary paper was filed. 37 CFR
 1.704(c)(9) was amended to begin the reduction for applicant delay
 on the day after the date of the decision by the Patent Trial and Appeal Board or by a
 Federal court and to end the reduction for applicant delay on date the amendment or
 other paper was filed. 37 CFR 1.704(c)(10) was amended to
 begin the reduction for applicant delay on the day after the mailing date of the notice
 of allowance under 35
 U.S.C. 151 and to end the reduction for applicant delay on the
 date the amendment under 37 CFR 1.312 or other paper was
 filed. 37
 CFR 1.704(c)(10) was further amended to provide that if the
 amendment under 37 CFR
 1.312 or other paper expressly requested by the Office, such an
 amendment or paper will not result in a reduction of patent term adjustment under
 37 CFR
 1.704(c)(10) . If the amendment under 37 CFR 1.312 or
 other paper was paper expressly requested by the Office, applicant will have three
 months to file a reply without the filing resulting in an applicant delay under
 37 CFR
 1.704(b) . 
 

 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 discussed above, if requested by the patentee.
 

 37 CFR 1.704(c) was also amended to
 change ‘‘mailing date’’ to ‘‘date of mailing’’ throughout for consistency with the other
 regulations pertaining to AIPA patent term adjustment ( 37 CFR
 1.702 through 37 CFR 1.705 ) and URAA patent term
 extension ( 37 CFR
 1.701 ). This conforming change was the only amendment to
 37 CFR
 1.704(c)(4) . As background, the USPTO has been issuing Office
 actions and notices through the Electronic Office Action Program since June of 2009 for
 patent applicants choosing this form of notification. See Electronic Office
 Action, 1343 OG 45 (June 2, 2009). The term ‘‘date of mailing’’ as used in
 the regulations pertaining to AIPA patent term adjustment and URAA patent term extension
 means the mailroom/notification date indicated on the form PTOL–90 accompanying the
 Office action or notice communication. See Electronic Office Action, 
 1343 OG at 46 (‘‘The mailroom/notification date will also be considered the date of
 mailing of the correspondence for all other purposes (e.g., 37 CFR 1.71(g)(2),1.97(b),
 1.701 through 1.705).” ).
 

 IV. 37 CFR 1.705 - DETERMINATION OF PATENT
 TERM ADJUSTMENT [Editor Note: 37 CFR
 1.705 , as reproduced below, include amendments applicable only
 to patents granted on or after January 14, 2013. See 37 CFR 1.705(a)-(f)
 (pre-2013-04-01) in effect with respect to applications
 granted prior to January 14, 2013.] 

 
 37 CFR 1.705 Patent term adjustment determination 

 
 (a) The patent will include notification of any patent term
 adjustment under 35 U.S.C. 154(b) . 
 

 (b) Any request for reconsideration of the patent term adjustment
 indicated on the patent must be by way of an application for patent term
 adjustment filed no later than two months from the date the patent was granted.
 This two-month period may be extended under the provisions of §
 1.136(a) . An application for patent term adjustment under
 this section must be accompanied by: 
 
 (1) The fee set forth in § 1.18(e) ; and 
 

 (2) A statement of the facts involved, specifying: 
 
 (i) The correct patent term adjustment and the basis
 or bases under § 1.702 for the
 adjustment; 
 

 (ii) The relevant dates as specified in
 §§ 1.703(a) through
 (e) for which an adjustment is sought and the
 adjustment as specified in § 1.703(f) to
 which the patent is entitled; 
 

 (iii) Whether the patent is subject to a terminal
 disclaimer and any expiration date specified in the terminal
 disclaimer; and 
 

 (iv)
 
 (A) Any circumstances during the prosecution of
 the application resulting in the patent that constitute a
 failure to engage in reasonable efforts to conclude
 processing or examination of such application as set forth in
 § 1.704 ;
 or
 

 (B) That there were no circumstances
 constituting a failure to engage in reasonable efforts to
 conclude processing or examination of such application as set
 forth in § 1.704 .
 
 

 
 

 
 

 
 

 (c) Any requests for reinstatement of all or part of the period of
 adjustment reduced pursuant to § 1.704(b) for failing to
 reply to a rejection, objection, argument, or other request within three months
 of the date of mailing of the Office communication notifying the applicant of
 the rejection, objection, argument, or other request be filed prior to the
 issuance of the patent. This time period is not extendable. Any request for
 reinstatement of all or part of the period of adjustment reduced pursuant to
 § 1.704(b) must also be
 accompanied by: 
 
 (1) The fee set forth in § 1.18(f) ; and 
 

 (2) A showing to the satisfaction of the Director that, in
 spite of all due care, the applicant was unable to reply to the
 rejection, objection, argument, or other request within three months of
 the date of mailing of the Office communication notifying the applicant
 of the rejection, objection, argument, or other request. The Office shall
 not grant any request for reinstatement for more than three additional
 months for each reply beyond three months from the date of mailing of the
 Office communication notifying the applicant of the rejection, objection,
 argument, or other request. 
 

 
 

 (d) No submission or petition on behalf of a third party
 concerning patent term adjustment under 35 U.S.C. 154(b) will be
 considered by the Office. Any such submission or petition will be returned to
 the third party, or otherwise disposed of, at the convenience of the Office.
 
 

 
 

 Section 1.705 implements the
 provisions of 35
 U.S.C. 154(b)(3) and (b)(4)(B) . See MPEP § 2733 for more
 information on the patent term adjustment determination under 37 CFR
 1.705(a) and MPEP § 2734 for more information on
 requests for reconsideration under 37 CFR 1.705(b) and the due care
 showing under 37 CFR 1.705(c) .
 

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

 [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 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:49:40