37 CFR § 1.704 — Reduction of period of adjustment (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.704 Reduction of period of adjustment
This page consolidates MPEP guidance interpreting 37 CFR § 1.704, including 396 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 1.704 governs the reduction of patent term adjustment periods for applications filed on or after May 29, 2000, by establishing specific criteria for calculating and potentially limiting patent term extensions.
What this section covers
- Regulatory framework for calculating patent term adjustments for applications filed on or after May 29, 2000.
- Grounds and conditions under which patent term adjustment periods can be reduced by the USPTO.
Key obligations
- Track and document administrative delays that impact patent term adjustment calculations accurately.
- Follow USPTO guidelines for documenting and requesting patent term adjustment reconsideration.
Conditions and exceptions
- Understand how procedural actions like Request for Continued Examination (RCE) can affect patent term adjustment calculations.
Practice notes
- Meticulously document administrative delays to ensure accurate patent term adjustment calculations.
- Prepare comprehensive documentation when requesting patent term adjustment reconsideration.
Official MPEP § 1.704 — Reduction of period of adjustment
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.704 Reduction of period of adjustment of patent term.
[Editor Note: Some paragraphs have limited applicability. See * below for details.]
- (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) [For statements filed on or after July 17, 2023] 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.
- (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:
- (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.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (d) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; para. (c)(9) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c)(11) redesignated as (c)(12) and (c)(11) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (c)(11) removed and (c)(12) redesignated as (c)(11), 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (d) revised, 76 FR 74700, Dec. 1, 2011, effective Dec. 1, 2011; para. (c)(9) introductory text revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (c)(10)(ii) and (c)(11) revised and para. (c)(12) added, 77 FR 49354, Aug. 16, 2012, effective Sept. 17, 2012; para. (e) revised, 78 FR 19416, Apr. 1, 2013, effective Apr. 1, 2013 (adopted as final, 79 FR 27755, May 15, 2014); paras. (c)(11) and (c)(12) revised, paras. (c)(13) and (f) added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (c)(10), (c)(12), (c)(13) and (d)(1) revised, para. (c)(14) added, 80 FR 1346, Jan. 9, 2015, effective Mar. 10, 2015; para. (c) revised, 85 FR 36335, June 16, 2020, effective July 16, 2020; para. (f) revised, 87 FR 30806, May 20, 2022, effective July 1, 2022; para. (d)(3) added, 88 FR 39172, June 15, 2023, effective July 17, 2023]
[ * Paragraphs (c)(2)-(4), (c)(6), and (c)(9)-(10) above 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 or in which a notice of allowance was mailed prior to July 16, 2020 and patentee has requested applicability in a timely filed request for reconsideration under § 1.705. For paras. (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 § 1.704 (2015‑03‑10 thru 2020‑07‑15) . ]
[ * Paragraphs (c)(11)-(14), and (e) above include changes having limited applicability as follows: Para. (c)(12) above includes 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 Mar. 10, 2015. For para. (c)(12) in effect for applications in which all requests for continued examination were filed prior to March 10, 2015, see § 1.704 (2013‑12‑18 thru 2015‑03‑09) below. Paras. (c)(11), (c)(13), and (c)(14) above 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 paras. (c)(11) and (c)(13) 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 Sept. 17, 2012, see § 1.704 (2012‑09‑17 thru 2013‑12‑17) . For para. (c)(11) in effect for applications in which there was no notice of appeal filed on or after Sept. 17, 2012, see § 1.704 (pre‑2012‑09‑17) . Para. (e) above includes changes applicable only to applications in which a notice of allowance was mailed on or after April 1, 2013. For para. (e) in effect for applications in which there was no notice of allowance mailed on or after April 1, 2013, see § 1.704 (pre 2013‑03‑31) .]
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