37 CFR 1.705 — Patent term adjustment determination
Statute text
Copy text37 CFR · MPEP Appendix R (Revision 01.2024)
37 CFR 1.705 — Patent term adjustment determination.
[Editor Note: Paras. (a)-(d) below include amendments applicable only to patents granted on or after January 14, 2013 * ]
(a) The patent will include notification of any patent term adjustment under 35 U.S.C. 154(b) .
(1) The fee set forth in § 1.18(e) ; and
(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
(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 .
(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) 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; paras. (d) and (e) removed, para. (f) redesignated as para. (d), and paras. (a), (b) introductory text, and (c) introductory text revised, 78 FR 19416, Apr. 1, 2013, effective Apr. 1, 2013 (adopted as final, 79 FR 27755, May 15, 2014)]
[ * The changes to paras. (a)-(f) effective Apr. 1, 2013 are applicable to any patent granted on or after Jan. 14, 2013. See § 1.705 (pre-2013-04-01) for paras. (a)-(f) in effect with respect to applications granted prior to Jan. 14, 2013.]
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Prior version
1.705 (pre-2013-04-01) Patent term adjustment determination.
[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) .
(1) The fee set forth in § 1.18(e) ; and
(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
(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 .
(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.]
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