What is the three-month rule for replying to Office actions in relation to patent term adjustment?

The three-month rule for replying to Office actions is an important consideration in patent term adjustment calculations. According to 37 CFR 1.704(b):

“[A]n 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.”

Key points about this rule:

• The three-month period applies regardless of the period for reply set in the Office action or notice.
• If an applicant takes more than three months to reply, the patent term adjustment will be reduced by the number of days beyond the three-month period.
• The rule applies to most pre-examination processing notices and Office actions during examination.
• Extensions of time under 37 CFR 1.136(a) do not prevent a reduction in patent term adjustment if the reply is filed more than three months after the mailing of the Office action.

This rule encourages applicants to promptly respond to Office actions to maintain the full patent term adjustment they may be entitled to.

To learn more:

• three-month rule
• Office action response
• patent term adjustment
• PTA reduction