37 CFR 1.703 — Period of adjustment of patent term due to examination delay

Ninth Edition, Revision 01.2024

[Editor Note: Para. (a)(1) below includes amendments applicable only to patents granted on or after January 14, 2013 and paras. (b)(4) and (e) below include amendments applicable only to applications and patents in which a notice of allowance issued on or after September 17, 2012 *]

• (a) The period of adjustment under § 1.702(a) is the sum of the following periods:
  • (1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application 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;
  • (2) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply under § 1.111 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;
  • (3) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply in compliance with § 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;
  • (4) The number of days, if any, in the period beginning on the day after the date that is four months after the date an appeal brief in compliance with § 41.37 of this title was filed and ending on the date of mailing of any of an examiner’s answer under § 41.39 of this title, an action under 35 U.S.C. 132 , or a notice of allowance under 35 U.S.C. 151 , whichever occurs first;
  • (5) The number of days, if any, in the period 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 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 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; and
  • (6) The number of days, if any, in the period 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 a patent was issued.
• (b) The period of adjustment under § 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 date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
  • (1) 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 ;
  • (2)
    • (i) 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 under 35 U.S.C. 135(a) 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 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;
  • (3)
    • (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 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 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
    • (iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151 ; and,
  • (4) The number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date that jurisdiction by the Patent Trial and Appeal Board ends under § 41.35(b) of this chapter or the date of the last decision by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 , whichever is later.
• (c) The period of adjustment under § 1.702(c) is the sum of the following periods, to the extent that the 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 under 35 U.S.C. 135(a) 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.
• (d) The period of adjustment under § 1.702(d) is the sum of the following periods, to the extent that the 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 § 41.39 of this title 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 § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151 .
• (e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter 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 .
• (f) The adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2) . To the extent that periods of delay attributable to the grounds specified in § 1.702 overlap, the period of adjustment granted under this section shall not exceed the actual number of days the issuance of the patent was delayed. The term of a patent entitled to adjustment under § 1.702 and this section shall be adjusted for the sum of the periods calculated under paragraphs (a) through (e) of this section, to the extent that such periods are not overlapping, less the sum of the periods calculated under § 1.704 . The date indicated on any certificate of mailing or transmission under § 1.8 shall not be taken into account in this calculation.
• (g) No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the expiration date specified in the disclaimer.

[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (f) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; paras. (a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(5), (b)(2), (b)(3)(iii), (c)(1)-(2) and (d)(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (b)(4) and (e) revised, 77 FR 49354, Aug. 16, 2012, effective Sept. 17, 2012; para. (a)(1) revised, 78 FR 19416, Apr. 1, 2013, effective Apr. 1, 2013 (adopted as final, 79 FR 27755, May 15, 2014); para. (b)(1) revised, 80 FR 1346, Jan. 9, 2015, effective Jan. 9, 2015]

[ *The changes to para. (a)(1) effective Apr. 1, 2013 are applicable to any patent granted on or after Jan. 14, 2013. See § 1.703 (2012‑09‑17 thru 2013‑03‑31) for para. (a)(1) applicable to patents granted before Jan. 14, 2013. The changes to paras. (b)(4) and (e) effective Sept. 17, 2012 are applicable to any application in which a notice of allowance was issued on or after Sept. 17, 2012, and any patent issuing thereon. See § 1.703 (pre‑2012‑09‑17) for paras. (b)(4) and (e) that apply if the notice of allowance was issued before Sept. 17, 2012.]