2731 Period of Adjustment [R-01.2024]

[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. When a period is indicated (in 37 CFR 1.703 or 1.704) as “beginning” on a particular day, that day is included in the period, in that such day is “day one” of the period and not “day zero.” For example, a period beginning on April 1 and ending on April 10 is ten (and not nine) days in length.

35 U.S.C. 154(b)(1)(A) and (B) provide for an adjustment of one day for each day after the end of the period set forth in 35 U.S.C. 154(b)(1)(A)(i), (ii), (iii), (iv), and (B) until the prescribed action is taken, whereas 35 U.S.C. 154(b)(1)(C) provides for an adjustment of one day for each day of the pendency of the proceeding, order, or review prescribed in 35 U.S.C. 154(b)(1)(C)(i) through (iii). Therefore, the end of the period set forth in 37 CFR 1.703(a) and 1.703(b) (which correspond to 35 U.S.C. 154(b)(1)(A) and (B)) is “day zero” (not “day one”) as to the period of adjustment, whereas the first day of the proceeding, order, or review set forth in 37 CFR 1.703(c), 1.703(d), and 1.703(e) (which correspond to 35 U.S.C. 154(b)(1)(C)(i) through (iii)) is “day one” of the period of adjustment.

I. PERIODS OF ADJUSTMENT

37 CFR 1.703(a) pertains to 35 U.S.C. 154(b)(1)(A) and indicates that the period of adjustment under 37 CFR 1.702(a) is the sum of the periods specified in 37 CFR 1.703(a)(1) through 37 CFR 1.703(a)(6).

A. 37 CFR 1.703(a)(1) – Longer Than Fourteen Months to Receive First Action

37 CFR 1.703(a)(1) pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(i) and specifies that the period is the number of days, if any, beginning on the date after the day that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 in an international application and ending on the mailing date of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first. For purposes of 35 U.S.C. 154(b)(1)(A)(i)(II) in effect prior to enactment of the AIA Technical Corrections Act, an international application fulfills the requirements of 35 U.S.C. 371 on the date of commencement of the national stage under 35 U.S.C. 371(b) or (f), or the date the application fulfills the requirements of 35 U.S.C. 371(c) if that date is later than the date of commencement of the national stage under 35 U.S.C. 371(b) or (f). In other words, the requirements of 35 U.S.C. 371 are met when applicant has met all of the requirements of 35 U.S.C. 371(c) and, unless applicant requests early processing under 35 U.S.C. 371(f), the time limit set forth in the applicable one of PCT Articles 22 and 39 has expired. Accordingly, the requirements of 35 U.S.C. 371 are met when the Office can begin examination of the patent application. If, for example, an applicant files the required oath or declaration (35 U.S.C. 115) and any necessary English translation after the expiration of the time limit set forth in Article 22 of the PCT or the time limit under Article 39 of the PCT, the date the requirements of 35 U.S.C. 371 are met is the date the requirements of 35 U.S.C. 371(c) are met. If, however, an applicant files the required declaration (or oath), filing fee, and any required English translation before the expiration of the relevant PCT Article 22 or Article 39 time period, but does not request early processing under 35 U.S.C. 371, the requirements of 35 U.S.C. 371 will be met once the applicable time period has expired. If the expiration of the thirty-month period falls on a weekend or a federal holiday, the application will commence on the next business day pursuant to PCT Rule 80.5. See Actelion Pharm. v. Matal, 881 F.3d 1339, 125 USPQ2d 1585, 1591 (Fed. Cir. 2018). An applicant can commence the national stage in an international application earlier than thirty months by making an express request under 35 U.S.C. 371(f). The request under 35 U.S.C. 371(f) must be expressly and clearly stated. The request can made by checking the appropriate box on form PTO-1390 (TRANSMITTAL LETTER TO THE UNITED STATES DESIGNATED/ELECTED OFFICE (DO/EO/US) CONCERNING A SUBMISSION UNDER 35 U.S.C. 371). Use of form PTO-1390 is optional. However, if an applicant uses the form and fails to check the appropriate box to request early processing, the early processing request may not be recognized unless the request under 35 U.S.C. 371(f) is clearly and explicitly stated in the national stage papers. A general statement that the applicant “earnestly solicits early examination and allowance of these claims” in a remarks section is not sufficient, by itself, to request early processing under 35 U.S.C. 371(f). See Actelion Pharm. v. Matal, 881 F.3d 1339, 125 USPQ2d 1585, 1590 (Fed. Cir. 2018).

For patents issuing from international application that are granted on or after January 14, 2013, 37 CFR 1.703(a)(1) in effect on April 1, 2013 applies. The AIA Technical Corrections Act and the changes to 37 CFR 1.703(a)(1) revised the date that begins the fourteen-month measurement from the date on which the international application fulfilled the requirements of 35 U.S.C. 371 to the date of commencement of the national stage under 35 U.S.C. 371. The change to 35 U.S.C. 154(b)(1)(A)(i)(II) means that the time period will begin sooner in international applications where the inventor does not file the inventor’s oath or declaration (35 U.S.C. 371(c)(4)) or other requirements at the time of the commencement.

A written restriction requirement, a written election of species requirement, a requirement for information under 37 CFR 1.105, an action under Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 453 O.G. 213 (Comm’r Pat. 1935), and a notice of allowability (PTOL-37) are each an action issued as a result of the examination conducted pursuant to 35 U.S.C. 131. As such, each of these Office actions is a notification under 35 U.S.C. 132.

In particular, courts have found that written restriction requirements are notifications under 35 U.S.C. 132. See Pfizer Inc. v. Lee, 811 F.3d 466, 117 USPQ 1781, 1786 (Fed. Cir. 2016) (The court found an initial written restriction requirement, which was withdrawn and reissued by the examiner, satisfied the notice requirement of 35 U.S.C. 132 because “the initial restriction requirement placed the applicants on notice of ‘the broad statutory basis for [the rejection of their] claims’” (quoting Chester v. Miller, 906 F.2d 1574, 1578, 15 USPQ2d 1333 (Fed. Cir. 1990)). See also Idorsia Pharm., Ltd. v. Iancu, 811 Fed. App’x 650, 2020 USPQ2d 10498 (Fed. Cir. 2020) (holding that a written restriction requirement satisfied the statutory notice requirement of 35 U.S.C. 132 for purposes of the 14-month deadline under 35 U.S.C. 154(b)(1)(A)(i), even when superseded and replaced by a subsequent corrected restriction requirement, because it was sufficiently informative to allow the patent applicant to counter the grounds for rejection). In considering whether a restriction requirement under 35 U.S.C. 121 was appealable under 35 U.S.C. 134, the Court of Customs and Patent Appeals (CCPA) noted that: (1) 35 U.S.C. 121 denoted its restriction procedure as a ‘‘requirement’’; (2) 35 U.S.C. 132 stated that the Commissioner shall give notice to the applicant whenever ‘‘any claim for a patent is rejected, or any objection or requirement made’’; and (3) 35 U.S.C. 134 provided for an appeal only by an applicant whose claims have been ‘‘twice rejected.’’ See In re Hengehold, 440 F.2d 1395, 1402–03, 169 USPQ 473,479 (CCPA 1971). Thus, the CCPA concluded that Congress intended to differentiate between objections and requirements (35 U.S.C. 132) and actual rejections of claims (35 U.S.C. 132) and made appeal applicable only to the latter. See Hengehold, 440 F.2d at 1403, 169 USPQ at 479. Since the CCPA cited with approval the "requirement" language of 35 U.S.C. 121 and evaluated rejections, objections, and requirements together under 35 U.S.C. 132 when discussing and differentiating among them to determine whether a restriction requirement was appealable under 35 U.S.C. 134, the CCPA must have considered a restriction requirement to be a requirement under 35 U.S.C. 132. In other words, the CCPA’s analysis determined that the making of a written restriction (or election) requirement is a notification under 35 U.S.C. 132. See also Digital Equipment Corp. v. Diamond, 653 F.2d 701, 713 n.13, 210 USPQ 521, 535–36 n.13 (1st Cir. 1981) (35 U.S.C. 132 when noting that the terms ‘‘requirement’’ and ‘‘objection’’ are distinct from ‘‘rejection’’ and as such, objections were not appealable under 35 U.S.C. 134). In addition, the Office has long considered a written restriction requirement containing no action on the merits to be a notice under 35 U.S.C. 132. For example, MPEP § 710.02(b) instructs examiners to set a shortened statutory period for reply of two months for a written restriction requirement containing no action on the merits under the authority given by 35 U.S.C. 133. 35 U.S.C. 133 would not apply to the period for reply to a written restriction requirement, if a written restriction requirement containing no action on the merits is not a notice under 35 U.S.C. 132.

Office notices and letters issued as part of the pre-examination processing of an application are not notices issued as a result of an examination conducted pursuant to 35 U.S.C. 131, and thus are not notifications under 35 U.S.C. 132. Examples of such pre-examination processing notices are: a Notice of Incomplete Nonprovisional Application, a Notice of Omitted Item(s) in a Nonprovisional Application, a Notice to File Missing Parts of Application, an Information Notice to Applicant, a Notice to File Corrected Application Papers Filing Date Granted, or a Notice to Comply with Requirements for Patent Applications Containing Nucleotide and/or Amino Acid Sequence Disclosures.

B. 37 CFR 1.703(a)(2) – Longer Than Four Months to Receive Action After a Reply under 35 U.S.C. 111

37 CFR 1.703(a)(2) pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(ii) and specifies that the period is the number of days, if any, beginning on the day after the date that is four months after the date a reply under 37 CFR 1.111 was filed and ending on the mailing date of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first.

C. 37 CFR 1.703(a)(3) – Longer Than Four Months to Receive Action After a Reply in Compliance 35 U.S.C. 113(c)

37 CFR 1.703(a)(3) also pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(ii) and specifies that the period is the number of days, if any, beginning on the day after the date that is four months after the date a reply in compliance with 37 CFR 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. A reply under 37 CFR 1.113 is a reply to a final Office action, and a reply in compliance with 37 CFR 1.113 is a reply that cancels all of the rejected claims and removes all outstanding objections and requirements or otherwise places the application in condition for allowance. Any amendment after final that does not cancel all of the rejected claims and remove all outstanding objections and requirements or otherwise place the application in condition for allowance is not a reply in compliance with 37 CFR 1.113(c) and will not trigger the four-month requirement under 37 CFR 1.703(a)(3) for the Office to act on the after-final reply.

D.37 CFR 1.703(a)(4) – Longer Than Four Months to Receive Action After an Appeal Brief in Compliance with 37 CFR 41.37

37 CFR 1.703(a)(4) also pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(ii) and specifies that the period is the number of days, if any, beginning on the day after the date that is four months after the date an appeal brief in compliance with 37 CFR 41.37 was filed and ending on the mailing date of any of an examiner’s answer under 37 CFR 41.39, an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first. As discussed below, the phrase “the date on which” an “appeal was taken” in 35 U.S.C. 154(b)(1)(A)(ii) means the date on which an appeal brief (and not a notice of appeal) was filed. The phrase “appeal brief in compliance with 37 CFR 41.37” requires that: (1) the appeal brief fee (37 CFR 1.17(b)) be paid (37 CFR 41.20); and (2) the appeal brief complies with the requirements in 37 CFR 41.37(c). However, for applications in which the appeal brief was filed on or after March 19, 2013, the fee required to accompany the appeal brief is set to zero dollars in amended 37 CFR 41.37(a), and accordingly, the phrase “appeal brief in compliance with 37 CFR 41.37” no longer requires the filing of the appeal brief fee. See Setting and Adjusting Patent Fees, 78 FR 4212, 4291 (January 18, 2013).

E. 37 CFR 1.703(a)(5) – Longer Than Four Months to Receive Action After a Final Decision by the Board or a Federal Court

37 CFR 1.703(a)(5) pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(iii) and specifies that the period is the number of days, if any, 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 (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 mailing date of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first.

The phrase “allowable claims remain in the application” for purposes of 35 U.S.C. 154(b)(1)(A)(iii) means that after the decision there is at least one pending claim (for purposes of statutory construction, “words importing the plural include the singular” (1 U.S.C. 1)) that is not withdrawn from consideration and is not subject to a rejection, objection, or other requirement. This applies in the following situations: (1) at least one claim is allowable (not merely objected to) at the time the examiner’s answer is mailed and is not canceled before, or made subject to a rejection as a result of, the appellate review; or (2) when all of the rejections applied to at least one claim are reversed, and such claim is not made subject to a rejection, as a result of the appellate review. For example:

• (A) If claims 1 and 2 (both independent) are pending, the decision affirms the rejection of claim 1, and claim 2 was indicated as allowable prior to the appeal, then “allowable claims remain in the application” for purposes of 35 U.S.C. 154(b)(1)(A)(iii).
• (B) If claims 1 and 2 are pending, the decision affirms the rejection of claim 1, and claim 2 was objected to by the examiner prior to the appeal as being allowable except for its dependency from claim 1, “allowable claims” do not “remain in the application” for purposes of 35 U.S.C. 154(b)(1)(A)(iii) (claim 2 is not allowable because there is an outstanding objection to it).
• (C) If claims 1 and 2 are pending (claim 2 either depending from claim 1 or is an independent claim), and the decision affirms the rejection of claim 1 and reverses the rejection of claim 2, then “allowable claims remain in the application” for purposes of 35 U.S.C. 154(b)(1)(A)(iii) (claim 2 is “allowable” within the meaning of 37 CFR 1.703(a)(5)) because there is no outstanding objection or requirement as to it (see MPEP § 1214.06, subsection II).

For a Board decision to be a ‘‘decision by the Patent Trial and Appeal Board under [35 U.S.C.] 134’’ within the meaning of 35 U.S.C. 154(b)(1)(A)(iii) (and 37 CFR 1.703(a)(5)), the decision must sustain or reverse the rejection(s) of the claim(s) on appeal, or in limited circumstances as further described below, a remand may be deemed a decision for purposes of 37 CFR 1.703(a)(5). For a Board decision to be a ‘‘decision by the Patent Trial and Appeal Board under [35 U.S.C.] 135’’within the meaning of 35 U.S.C. 154(b)(1)(A)(iii) (and 37 CFR 1.703(a)(5)), the decision must include a decision on the patentability of the claims, derivation, or priority of invention.

If an application is remanded by a panel and the remand is the last action by a panel of the Board prior to the mailing of a notice of allowance under 35 U.S.C. 151, the remand generally 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 as that phrase is used in 37 CFR 1.703(e). However, a remand by a panel of the 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 the 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.

The phrase ‘‘final decision’’ in 37 CFR 1.703(a)(5) means that: (1) the decision is the last decision in the review by the Board (or by a federal court); and (2) the decision does not require further action by the applicant to avoid termination of proceedings as to the rejected claims. Thus, a Board decision containing a new ground of rejection under 37 CFR 41.50(b) requires action by the applicant to avoid termination of proceedings as to the rejected claims and is, thus, is not considered a ‘‘final decision’’ for purposes of 37 CFR 1.703(a)(5). The phrase ‘‘final decision,’’ however, does not require that the decision be final for purposes of judicial review (e.g., a Board decision reversing the rejection of all of the claims on appeal is not ‘‘final’’ for purposes of judicial review, but (absent a subsequent decision by the Board) is a ‘‘final decision’’ for purposes of 37 CFR 1.703(a)(5)).

F.37 CFR 1.703(a)(6) – Longer Than Four Months to Issue Patent After Payment of the Issue Fee

37 CFR 1.703(a)(6) pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(iv) and specifies that the period is the number of days, if any, 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 the patent was issued. Thus, the period of adjustment under 35 U.S.C. 154(b)(1)(A)(iv), if any, is ascertained by looking back from the issue date to the most recent time at which the issue fee or another requirement was outstanding, determining the succeeding date on which the issue fee was paid and all outstanding requirements were satisfied, and measuring the number of days, if any, in the period beginning on the day after the date that is four months after such date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued. The date the issue fee was paid and all outstanding requirements were satisfied is the later of the date the issue fee was paid or the date all outstanding requirements were satisfied. Note that the filing of a priority document (and processing fee) is not considered an outstanding requirement under 35 U.S.C. 154(b)(1)(A)(iv) and 37 CFR 1.703(a)(6) because, if the priority document is not filed, the patent simply issues without the priority claim (the application is not abandoned). If prosecution in an application is reopened after allowance (see MPEP § 1308), all outstanding requirements are not satisfied until the application is again in condition for allowance as indicated by the issuance of a new notice of allowance under 35 U.S.C. 151 (see MPEP § 1308) and the form PTOL-85(b) from the latest notice of allowance is returned to the Office along with any outstanding requirements, such as payment of any additional fees owed and/or additional required drawings to be submitted by the applicant. For example, if prosecution in an application is reopened after a notice of allowance as the result of an applicant filing a request for continued examination, the date on which the issue fee was paid and all outstanding requirements were satisfied is the date on which the Issue Fee Transmittal Form (PTOL-85(b)) from the ultimate notice of allowance under 35 U.S.C. 151 is returned to the Office (or a later date if there remain additional outstanding requirements, such as payment of any additional fees owed or required drawings to be submitted). See MPEP § 2732.

Applicant is also provided patent term adjustment for Office delay under 37 CFR 1.702(a)(2) when the Office fails to act on a request for continued examination within four months of the filing of the request for continued examination. The period of adjustment for Office delay, if any, begins on the date that is the day after the date that is four months from the filing of the request for continued examination and ends on the date of mailing of the date of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.

II. THREE-YEAR PENDENCY ADJUSTMENT

37 CFR 1.703(b) pertains to the provisions of 35 U.S.C. 154(b)(1)(B) and indicates that the period of adjustment under 37 CFR 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 actual filing date of the application and ending on the date a patent was issued. 37 CFR 1.703(b) also sets forth the limitations on patent term adjustment specified in 35 U.S.C. 154(b)(1)(B)(i) and (ii). Specifically, 37 CFR 1.703(b) provides that the period of adjustment of the term of a patent shall not include the period equal to the sum of the following periods: (1) the period of pendency consumed by continued examination of the application under 35 U.S.C. 132(b) (35 U.S.C. 154(b)(1)(B)(i)); (2) the period of pendency consumed by interference or derivation proceedings (35 U.S.C. 154(b)(1)(B)(ii)); (3) the period of pendency consumed by imposition of a secrecy order (35 U.S.C. 154(b)(1)(B)(ii)); and (4) the period of pendency consumed by appellate review under 35 U.S.C. 134, 141, 145, whether successful or unsuccessful (35 U.S.C. 154(b)(1)(B)(ii)). The provisions of 35 U.S.C. 154(b)(1)(B)(iii) concerning the period of pendency consumed by delays in the processing of the application requested by the applicant are treated in 37 CFR 1.704 as such applicant delays are also circumstances constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.

The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) decided that, with respect to the provisions of 35 U.S.C. 154(b)(1)(B)(i), that: (1) any time consumed by continued examination under 35 U.S.C. 132(b) is subtracted in determining the extent to which the period defined in 35 U.S.C. 154(b)(1)(B) exceeds three years, regardless of when the continued examination under 35 U.S.C. 132(b) was initiated; but (2) the time consumed by continued examination under 35 U.S.C. 132(b) does not include the time after a notice of allowance is mailed, unless the Office actually resumes examination of the application after allowance. See Novartis AG v. Lee, 740 F.3d 593, 109 USPQ2d 1385 (Fed. Cir. 2014). Where an interference has been declared following the filing of a request for continued examination, the period after termination of the interference through the mailing of the notice of allowance constitutes time consumed by continued examination requested by the applicant and is excluded from the three year calculation under 35 U.S.C. 154(b)(1)(B). See Mayo Found. for Med. Educ. & Research v. Iancu, 938 F.3d 1343, 2019 USPQ2d 346079 (Fed. Cir. 2019). In one instance, a court found that the time consumed by continued examination did not begin on the date of filing of the request for continued examination because the Office had failed to recognize that it had received any request from the applicant to begin continued examination and erroneously had determined the application to be abandoned. Under these facts, the court found that the Office may consider factors such as when the Office acknowledges receipt of the request for continued examination, or when the request for continued examination is forwarded to the examiner, to determine when the period excluded as time consumed by continued examination begins. See Ariad Pharm. Inc v. Matal, 283 F. Supp. 3d 503 (E.D. Va. 2018).

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. The changes to 37 CFR 1.703(b)(1) apply to any patent granted before, on, or after January 9, 2015. The time period between a request for continued examination and a notice of allowance is “time consumed by continued examination of the application requested by the applicant under section 132(b)” regardless of whether the Office issues an Office action under 35 U.S.C. 132. Thus, any period of examination after the mailing of a notice of allowance resulting from the filing of a subsequent request for continued examination would also be considered “time consumed by continued examination,” but a period of examination after the mailing of a notice of allowance resulting from the Office sua sponte reopening prosecution would not be considered “time consumed by continued examination” (unless the applicant subsequently files a request for continued examination).

For example, if a first request for continued examination is filed before a notice of allowance has been mailed and a second request for continued examination is filed after a notice of allowance has been mailed, the time consumed by continued examination of the application under 35 U.S.C. 132(b) is the number of days in the period beginning on the date on which the first request for continued examination was filed and ending on the date of mailing of the notice of allowance following the first request for continued examination, plus the number of days in the period beginning on the date on which the second request for continued examination was filed and ending on the date of mailing of the notice of allowance following the second request for continued examination. Note that the “time consumed by continued examination” as measured by 37 CFR 1.703(b)(1) may include non-contiguous periods if the applicant files a subsequent request for continued examination after a notice of allowance is mailed.

In contrast, if a second request for continued examination is filed without a notice of allowance having been mailed between the filing of the first and second requests for continued examination and a notice of allowance is mailed after the second request for continued examination, the time consumed by continued examination of the application under 35 U.S.C. 132(b) is the number of days in the period beginning on the date on which the first request for continued examination was filed and ending on the date of mailing of the notice of allowance. 35 U.S.C. 154(b)(1)(B)(i) provides that the period under 35 U.S.C. 154(b)(1)(B) does not include “any time consumed by continued examination of the application requested by the applicant under section 132(b)” (emphasis added). Therefore, a second or subsequent request for continued examination will be treated the same as the first request for continued examination with respect to period between the filing of the request for continued examination and a notice of allowance being considered “time consumed by continued examination of the application requested by the applicant under section 132(b).”

The “time consumed by continued examination of the application requested by the applicant under section 132(b)” is the number of days, if any, in the period beginning on the date on which a request for continued examination was filed and ending on the date of mailing of the notice of allowance (PTOL-85), regardless of whether the notice of allowability (PTOL-37) and notice of allowance (PTOL-85) are mailed or issued on different days, and also regardless of whether the Office has issued multiple consecutive notices of allowability (PTOL-37). As background, the Office issues a notice of allowability (PTOL-37) and a notice of allowance (PTOL-85) when an application is in condition for allowance. These notices are generally mailed or issued on the same day, but the notice of allowability (PTOL-37) and notice of allowance (PTOL-85) are occasionally mailed or issued on different days. The Office also occasionally mails or issues multiple consecutive notices of allowability (PTOL-37) (e.g., a notice of allowability and then a supplemental notice of allowability) and rarely issues multiple consecutive notices of allowance (e.g., a notice of allowance (PTOL-85) and then a supplemental notice of allowance (PTOL-85)). In the rare instance in which the Office issues multiple consecutive notices of allowance (PTOL-85), the “time consumed by continued examination of the application requested by the applicant under section 132(b)” is the number of days, if any, in the period beginning on the date on which a request for continued examination was filed and ending on the date of mailing of the first notice of allowance (PTOL-85).

III. PERIODS OF ADJUSTMENT FOR INTERFERENCE OR DERIVATION

37 CFR 1.703(c) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(i) and indicates that the period of adjustment under 37 CFR 1.702(c) is the sum of the following periods (to the extent that such 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 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.

IV. PERIODS OF ADJUSTMENT FOR APPLICATIONS UNDER A SECRECY ORDER

37 CFR 1.703(d) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(ii) and indicates that the period of adjustment under 37 CFR 1.702(d) is the sum of the following periods (to the extent that such 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 37 CFR 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 37 CFR 5.3(c) and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151 and 37 CFR 1.311.

V. PERIODS OF ADJUSTMENT FOR SUCCESSFUL APPEAL

37 CFR 1.703(e) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(iii) and indicates that the period of adjustment under 37 CFR 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which a jurisdiction over the application passes to the Patent Trial and Appeal Board under 37 CFR 41.35(a) or 37 CFR 41.31 if the notice of allowance was issued prior to September 17, 2012, and ending on the date of a final decision in favor of the applicant by the 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.

The Federal Circuit has held that the provisions of 35 U.S.C. 154(b)(1)(C)(iii) impose two requirements: that an adverse determination of patentability be reversed, and that the application reviewed in that appeal issue as a patent as a result of that reversal. SawStop Holding LLC v. Vidal, 48 F.4th 1355, 1361, 2022 USPQ2d 836 (Fed. Cir. 2022). In SawStop, the Board decision included a new ground of rejection without maintaining the examiner’s rejection of the claim, and therefore, the court determined there was no reversal of an adverse determination of patentability under 35 U.S.C. 154(b)(1)(C)(iii) because there was no substantive change in the patentability of the claim at issue as the claim remained unpatentable both before and after the appeal. Likewise, there is no reversal of an adverse determination of patentability under 35 U.S.C. 154(b)(1)(C)(iii) if, in lieu of issuing an examiner’s answer, the examiner reopens prosecution after the filing of the appeal brief under 37 CFR 41.37. See Chudik v. Hirshfeld, 987 F.3d 1033, 2021 USPQ2d 149 (Fed. Cir. 2021). Furthermore, in order to issue as a patent as a result of the reversal, the claim that ultimately issues cannot differ substantively from the claim that was reviewed. See SawStop, 48 F.4th at 1362. “The plain language of ‘issued under a decision in the review’ means that at least one claim must ‘issue[] under’ the mandate of the appellate decision.” Id. “Because claim 11 … was subject to an adverse determination of patentability both before and after the appeal, and because the claim issued only after significant substantive post-appeal prosecution and amendment, we affirm the District Court's determination that the … patent did not ‘issue[] under a decision in the review reversing an adverse determination of patentability’ as that expression is used in 35 U.S.C. § 154(b)(1)(C)(iii).” Id. at 1362-63.

VI. DETERMINATION OF ADJUSTMENT

37 CFR 1.703(f) indicates that the adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2) and also indicates that to the extent that periods of delay attributable to the grounds specified in 37 CFR 1.702 overlap, the period of adjustment will not exceed the actual number of days the issuance of the patent was delayed (35 U.S.C. 154(b)(2)(A)). 35 U.S.C. 154(b)(2)(A) provides that "[t]o the extent that periods of delay attributable to grounds specified in [35 U.S.C. 154(b)(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." The USPTO previously had interpreted this provision as covering situations in which a delay by the USPTO contributes to multiple bases for adjustment (the "pre-Wyeth" interpretation of 35 U.S.C. 154(b)(2)(A)). See Explanation of 37 CFR 1.703(f) and of the United States Patent and Trademark Office Interpretation of 35 U.S.C. 154(b)(2)(A), 69 FR 34283 (June 21, 2004), 1284 OG 56 (July 13, 2004). The United States Court of Appeals for the Federal Circuit, however, held that the USPTO's earlier interpretation of 35 U.S.C. 154(b)(2)(A) was erroneous, and that periods of delay overlap under 35 U.S.C. 154(b)(2)(A) only if the periods which measure the amount of adjustment under 35 U.S.C. 154(b)(1) occur on the same calendar day. See Wyeth v. Kappos, 591 F.3d 1364, 93 USPQ2d 1257 (Fed. Cir. 2010).

37 CFR 1.703(f) also specifically indicates that the term of a patent entitled to adjustment under 37 CFR 1.702 and 1.703 shall be adjusted for the sum of the periods calculated under 37 CFR 1.703(a) through (e), to the extent that such periods are not overlapping, less the sum of the periods calculated under 37 CFR 1.704.

Moreover, 37 CFR 1.703(f) provides that the date indicated on any certificate of mailing or transmission under 37 CFR 1.8 shall not be taken into account in this calculation. The date indicated on a certificate of mailing is used only to determine whether the correspondence is timely (including whether any extension of the time and fee are required) so as to avoid abandonment of the application or termination or dismissal of proceedings. The actual date of receipt of the correspondence in the Office is used for all other purposes. See 37 CFR 1.8(a). Thus, while the date indicated on any certificate of mailing or transmission under 37 CFR 1.8 will continue to be taken into account in determining timeliness, the date of filing (37 CFR 1.6) will be the date used in a patent term adjustment calculation. Applicant may wish to consider the use of the USPTO patent electronic filing system, the Priority Mail Express^® Post Office to Addressee service of the United States Postal Service (37 CFR 1.10) or facsimile transmission (37 CFR 1.6(d)), when permitted, for replies to be accorded the earliest possible filing date for patent term adjustment calculations. Alternatively, applicant may choose to mail correspondence with sufficient time to ensure that the correspondence is received in the Office (and stamped with a date of receipt) before the expiration of the three-month period. Applicants are encouraged to check the USPTO patent electronic filing system to verify the date of deposit entered in One Patent Service Gateway (OPSG) for the correspondence. Applicants should contact the Office for correction of any such entries prior to the grant of the patent. At the time of the grant of the patent, the patent term adjustment calculation will be made with the dates in OPSG. Thereafter, a patent term adjustment accompanied by the requisite fee and statement or showing, will be necessary to have any reduction of patent term under 37 CFR 1.704 reinstated.

Finally, 37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).

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