How does the submission of a supplemental reply affect patent term adjustment?
The submission of a supplemental reply can lead to a reduction in patent term adjustment. According to 37 CFR 1.704(c)(8):
“Submission of a supplemental reply or other paper after a reply has been filed as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.”
Key points about supplemental replies and patent term adjustment:
- The reduction period begins on the day after the initial reply was filed and ends on the date the supplemental reply or other paper was filed.
- This reduction applies even if the supplemental reply is filed within the period for response set in the Office action.
- Exceptions exist for supplemental replies expressly requested by the examiner.
- The submission of an information disclosure statement (IDS) after a reply but before the next Office action can be considered a supplemental reply for this purpose.
The MPEP explains: “The submission of a supplemental reply or other paper (e.g., an information disclosure statement (IDS) or petition) after an initial reply was filed requires the Office to restart consideration of the initial reply in view of the supplemental reply or other paper, which will result in a delay in the Office’s response to the initial reply.”
To avoid reductions in patent term adjustment, applicants should strive to include all necessary information and arguments in their initial replies whenever possible.
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