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

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.]

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 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 alsoNovartis 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).]

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.]

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.

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