37 CFR 1.705 (pre-2013-04-01) — Patent term adjustment determination
Ninth Edition, Revision 01.2024
[Editor Note: Applicable to patents granted before January 14, 2013 *]
- (a) The notice of allowance will include notification of any patent term adjustment under 35 U.S.C. 154(b) .
- (b) Any request for reconsideration of the patent term
adjustment indicated in the notice of allowance, except as provided
in paragraph (d) of this section, and any request for reinstatement
of all or part of the term reduced pursuant to §
1.704(b)
must be by way of an application
for patent term adjustment. An application for patent term
adjustment under this section must be filed no later than the
payment of the issue fee but may not be filed earlier than the date
of mailing of the notice of allowance. An application for patent
term adjustment under this section must be accompanied by:
- (1) The fee set forth in § 1.18(e) ; and
- (2) A statement of the facts involved,
specifying:
- (i) The correct patent term adjustment and the basis or bases under § 1.702 for the adjustment;
- (ii) The relevant dates as specified in §§ 1.703(a) through (e) for which an adjustment is sought and the adjustment as specified in § 1.703(f) to which the patent is entitled;
- (iii) Whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer; and
- (iv)
- (A) Any circumstances during the prosecution of the application resulting in the patent that constitute a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704 ; or
- (B) That there were no circumstances constituting a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704 .
- (c) Any application for patent term adjustment under
this section that requests reinstatement of all or part of the
period of adjustment reduced pursuant to §
1.704(b)
for failing to reply to a
rejection, objection, argument, or other request within three
months of the date of mailing of the Office communication notifying
the applicant of the rejection, objection, argument, or other
request must also be accompanied by:
- (1) The fee set forth in § 1.18(f) ; and
- (2) A showing to the satisfaction of the Director that, in spite of all due care, the applicant was unable to reply to the rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request. The Office shall not grant any request for reinstatement for more than three additional months for each reply beyond three months from the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request.
- (d) If there is a revision to the patent term adjustment indicated in the notice of allowance, the patent will indicate the revised patent term adjustment. If the patent indicates or should have indicated a revised patent term adjustment, any request for reconsideration of the patent term adjustment indicated in the patent must be filed within two months of the date the patent issued and must comply with the requirements of paragraphs (b)(1) and (b)(2) of this section. Any request for reconsideration under this section that raises issues that were raised, or could have been raised, in an application for patent term adjustment under paragraph (b) of this section shall be dismissed as untimely as to those issues.
- (e) The periods set forth in this section are not extendable.
- (f) No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (c)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (d) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004]
[ *See § 1.705 for the rule applicable to patents granted on or after Jan. 14, 2013.]
Cited authority
- 35 U.S.C. 154 Contents and term of patent; provisional rights
- 37 CFR 1.704 (pre-2012-09-17) Reduction of period of adjustment of patent term
- 37 CFR 1.18 Patent post allowance (including issue) fees
- 37 CFR 1.702 (pre-2013-04-01) Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000)
- 37 CFR 1.703 (pre-2012-09-17) Period of adjustment of patent term due to examination delay
- 37 CFR 1.705 Patent term adjustment determination
Cited by
- 1002.02(b) Petitions and Requests Decided by the Deputy Commissioner Who Oversees the Office of Petitions or Assigned Staff in the Office of Petitions, the Office of Patent Legal Administration and the MPEP Staff Office
- 2710 Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154
- 2730 Applications Filed on or After May 29, 2000; Grounds for Adjustment
- 2732 Reduction of Period of Adjustment of Patent Term
- 2733 Patent Term Adjustment Determination
- 2734 Application for Patent Term Adjustment; Due Care Showing
- 2736 Third-Party Papers
- 2751 Eligibility Requirements
- 37 CFR 1.702 Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000)
- 37 CFR 1.702 (pre-2013-04-01) Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000)
- 37 CFR 1.704 Reduction of period of adjustment of patent term
- 37 CFR 1.704 (pre-2013-03-31) Reduction of period of adjustment of patent term
- 37 CFR 1.705 Patent term adjustment determination