37 CFR § 1.701 — Extension of patent term due to examination (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.701 Extension of patent term due to examination
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.701, including 43 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
37 CFR 1.701 provides a regulatory mechanism for extending patent terms to compensate for administrative delays during the patent examination process.
What this section covers
- Procedural framework for reviewing patent term extensions for applications filed on or after June 8, 1995
- Process for determining additional patent term based on examination delays
Key obligations
- Track and document examination delays carefully to qualify for term extension
- Comply with specific filing requirements and timelines for patent term extension petitions
- Follow regulatory guidelines for calculating appropriate patent term extension
Conditions and exceptions
- Recognize that not all patent applications qualify for term extension under the same criteria
Practice notes
- Meticulously document and track all periods of administrative delay during patent examination
- Understand the nuanced differences between patent term adjustment and patent term extension
Official MPEP § 1.701 — Extension of patent term due to examination
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.701 Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000).
- (a) A patent, other than for designs, issued on an
application filed on or after June 8, 1995, is entitled to
extension of the patent term if the issuance of the patent was
delayed due to:
- (1) Interference or derivation proceedings under 35 U.S.C. 135(a) ; and/or
- (2) The application being placed under a secrecy order under 35 U.S.C. 181 ; and/or
- (3) Appellate review by the Patent Trial and Appeal Board or by a Federal court under 35 U.S.C. 141 or 145 , if the patent was issued pursuant to a decision in the review reversing an adverse determination of patentability and if the patent is not subject to a terminal disclaimer due to the issuance of another patent claiming subject matter that is not patentably distinct from that under appellate review. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(2) as amended by section 532(a) of the Uruguay Round Agreements Act, Public Law 103–465, 108 Stat. 4809, 4983–85 (1994), and a final decision in favor of the applicant under paragraph (c)(3) of this section. A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 .
- (b) The term of a patent entitled to extension under paragraph (a) of this section shall be extended for the sum of the periods of delay calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, to the extent that these periods are not overlapping, up to a maximum of five years. The extension will run from the expiration date of the patent.
- (c)
- (1) The period of delay under paragraph (a)(1)
of this section for an application is the sum of the
following periods, to the extent that the periods are not
overlapping:
- (i) With respect to each interference or derivation proceeding in which the application was involved, the number of days, if any, in the period beginning on the date the interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
- (ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Patent and Trademark Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
- (2) The period of delay under paragraph (a)(2)
of this section for an application is the sum of the
following periods, to the extent that the periods are not
overlapping:
- (i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181 ;
- (ii) The number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order and any renewal thereof was removed;
- (iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding would be instituted but for the secrecy order and ending on the date the secrecy order and any renewal thereof was removed; and
- (iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) and ending on the date of mailing of the notice of allowance under § 1.311 .
- (3) The period of delay under paragraph (a)(3) of this section is the sum of the number of days, if any, in the period beginning on the date on which an appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and ending on the date of a final decision in favor of the applicant by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 .
- (1) The period of delay under paragraph (a)(1)
of this section for an application is the sum of the
following periods, to the extent that the periods are not
overlapping:
- (d) The period of delay set forth in paragraph (c)(3)
shall be reduced by:
- (1) Any time during the period of appellate review that occurred before three years from the filing date of the first national application for patent presented for examination; and
- (2) Any time during the period of appellate review, as determined by the Director, during which the applicant for patent did not act with due diligence. In determining the due diligence of an applicant, the Director may examine the facts and circumstances of the applicant’s actions during the period of appellate review to determine whether the applicant exhibited that degree of timeliness as may reasonably be expected from, and which is ordinarily exercised by, a person during a period of appellate review.
- (e) The provisions of this section apply only to original patents, except for design patents, issued on applications filed on or after June 8, 1995, and before May 29, 2000.
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (e) added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (d)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(3) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; para. (c)(2)(ii) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(1), (a)(3), (c)(1)(i)-(ii), (c)(2)(iii), and (c)(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
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| MPEP Section | Rules |
|---|---|
| MPEP § 1002.02(b) | |
| MPEP § 2710 | |
| MPEP § 2720 | |
| MPEP § 2730 | |
| MPEP § 2751 | |
| MPEP § 711.03(c) |