37 CFR 1.704 (2015-03-10 thru 2020-07-15) — Reduction of period of adjustment of patent term

Ninth Edition, Revision 01.2024

[The following paragraphs have limited applicability, see * below. ]

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• (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:
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  • (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 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 date after the date the issue fee was due and ending on the earlier of:
    • (i) The date of mailing of the decision reviving the application or accepting late payment of the issue fee; or
    • (ii) The date that is four months after 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 mailing date 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 mailing date 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;
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  • (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 lesser of:
    • (i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the date of mailing of the supplemental Office action or notice of allowance; or
    • (ii) Four months;
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  • (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 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 lesser of:
    • (i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the mailing date of the supplemental Office action or notice of allowance; or
    • (ii) Four months;
  • (10) Submission of an amendment under § 1.312 or other paper, other than 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 lesser of:
    • (i) The number of days, if any, beginning on the date the amendment under § 1.312 or other paper was filed and ending on the mailing date of the Office action or notice in response to the amendment under § 1.312 or such other paper; or
    • (ii) Four months;

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[ * Paras. (c)(2)-(4), (c)(6), and (c)(9)-(10) above remain applicable to original utility and plant applications filed on or after May 29, 2000, in which no notice of allowance was mailed on or after July 16, 2020. Where a notice of allowance was mailed on or after July 16, 2020 or patentee has requested applicability of the current rule in a timely filed request for reconsideration under § 1.705, see § 1.704 for the current rule. Older versions of paras. (c)(2)-(4), (c)(6), and (c)(9)-(10) are available from prior publications of Appendix R of the MPEP in the archives available from www.uspto.gov/web/offices/pac/ mpep/old/index.htm .]