C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart F—Adjustment and Extension of Patent Term

37 C.F.R. § 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)

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(a) Failure to take certain actions within specified time frames. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to:

(1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than 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;

(2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken under 35 U.S.C. 134 not later than four months after the date on which the reply was filed or the appeal was taken;

(3) Act on an application not later than four months after the date of a decision by the Patent Trial and Appeal Board under 35 U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146 where at least one allowable claim remains in the application; or

(4) Issue a patent not later than four months after the date on which the issue fee was paid under 35 U.S.C. 151 and all outstanding requirements were satisfied.

(b) Three-year pendency. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within 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, but not including:

(1) Any time consumed by continued examination of the application under 35 U.S.C. 132(b);

(2) Any time consumed by an interference or derivation proceeding under 35 U.S.C. 135(a);

(3) Any time consumed by the imposition of a secrecy order under 35 U.S.C. 181;

(4) Any time consumed by review by the Patent Trial and Appeal Board or a Federal court; or

(5) Any delay in the processing of the application by the Office that was requested by the applicant.

(c) Delays caused by interference and derivation proceedings. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to interference or derivation proceedings under 35 U.S.C. 135(a).

(d) Delays caused by secrecy order. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the application being placed under a secrecy order under 35 U.S.C. 181.

(e) Delays caused by successful appellate review. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to review by the Patent Trial and Appeal Board under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued under a decision in the review reversing an adverse determination of patentability. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision by the Patent Trial and Appeal Board as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of the applicant under § 1.703(e). A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.

(f) The provisions of this section and §§ 1.703 through 1.705 apply only to original applications, except applications for a design patent, filed on or after May 29, 2000, and patents issued on such applications.

[65 FR 56391, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 77 FR 46627, Aug. 6, 2012; 78 FR 19420, Apr. 1, 2013]
Notes of Decisions
Cited in 10 cases (2 in the last 5 years), 2008–2021 · leading case: Univ. of Massachusetts v. Kappos, 903 F. Supp. 2d 77 (D.D.C. 2012).
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Univ. of Massachusetts v. Kappos, 903 F. Supp. 2d 77 (D.D.C. 2012). · cites it 4× “First, 37 C.F.R. § 1.702 (a) restates the text of the statute, providing that the patent term shall be adjusted if the issuance of the patent was delayed due to the failure of the PTO to “[m]ail at least one of a notification under 35 U.”
Sykes v. Dudas, 573 F. Supp. 2d 191 (D.D.C. 2008). · cites it 2× “The Court is persuaded that the PTO’s interpretation of AIPA § 4405(a), as reflected in its implementing regulation at 37 C.F.R. 1.702, is correct, and at a minimum, entirely reasonable.”
Chudik v. Hirshfeld, 987 F.3d 1033 (Fed. Cir. 2021). · cites it 3× “Two of those regulations are at issue in the present case: 37 C.F.R. §§ 1.702 , 1.703. Section 1.702(e) pertains to “[d]elays caused by successful appellate review” and provides: [T]he term of an original patent shall be adjusted if the issuance of the patent was delayed due to…”
Novartis Ag v. Kappos, 904 F. Supp. 2d 58 (D.D.C. 2012). · cites it 3× “First, 37 C.F.R. § 1.702 (b) states that the patent term shall be adjusted if the issuance of the patent was delayed due to the failure of the PTO to issue a patent within three years after the filing date, “but not including: (1) any time consumed by continued examination of…”
Abraxis Bioscience, LLC v. Kappos, 10 F. Supp. 3d 53 (D.D.C. 2014). · cites it 5× “First, 37 C.F.R. § 1.702 (b) describes the USPTO’s interpretation of the grounds for PTA due to the agency’s failure to take certain actions within specified time frames.”
Novartis Ag v. Focarino, 740 F.3d 593 (Fed. Cir. 2014). “” 37 C.F.R. § 1.702 (b)(1). Second, if an applicant is entitled to an extension, “[t]he period of adjustment .”
Janssen Pharmaceutica, N v. v. Kappos, 928 F. Supp. 2d 102 (D.D.C. 2013). · cites it 3× “§ 154 (b)(1)(A); accord 37 C.F.R. §§ 1.702 (a), 1.703(a). To account for any such delays, “the term of the patent shall be extended 1 day for each day after the end of the period specified .”
Janssen Pharmaceutica, N.V. v. Kappos, 844 F. Supp. 2d 707 (E.D. Va. 2012). “§ 154 (b)(l)(A)(i) and 37 CFR 1.702(a)(1) on April 9, 2007. Unless expunged from the record (which is not warranted in this situation), for purposes of calculating patent term adjustment, the Office action entered by the examiner on April 9, 2007 was properly used to determine…”
Mohsenzadeh v. Lee, 5 F. Supp. 3d 791 (E.D. Va. 2014). · cites it 6× “Alternatively, the Court holds that to the extent § 154(b)(1)(A) is ambiguous, the United States Patent and Trademark Office’s longstanding interpretation of the PTA Statute, as manifested in 37 C.F.R. §§ 1.702 , 1.703, and 1.704(c)(12), is reasonable and entitled to some…”
SawStop Holding LLC v. Iancu (E.D. Va. 2021). “14] at 15 (citing 37 CFR. § 1.702(e)). The regulation plaintiff cites provides no support for its argument.”
— 37 C.F.R. § 1.702(a) — 1 case
Univ. of Massachusetts v. Kappos, 903 F. Supp. 2d 77 (D.D.C. 2012). “First, 37 C.F.R. § 1.702 (a) restates the text of the statute, providing that the patent term shall be adjusted if the issuance of the patent was delayed due to the failure of the PTO to “[m]ail at least one of a notification under 35 U.”
— 37 C.F.R. § 1.702(a)(1) — 1 case
Janssen Pharmaceutica, N.V. v. Kappos, 844 F. Supp. 2d 707 (E.D. Va. 2012). “§ 154 (b)(l)(A)(i) and 37 CFR 1.702(a)(1) on April 9, 2007. Unless expunged from the record (which is not warranted in this situation), for purposes of calculating patent term adjustment, the Office action entered by the examiner on April 9, 2007 was properly used to determine…”
— 37 C.F.R. § 1.702(a)(2) — 1 case
Univ. of Massachusetts v. Kappos, 903 F. Supp. 2d 77 (D.D.C. 2012). “First, 37 C.F.R. § 1.702 (a) restates the text of the statute, providing that the patent term shall be adjusted if the issuance of the patent was delayed due to the failure of the PTO to “[m]ail at least one of a notification under 35 U.”
— 37 C.F.R. § 1.702(e) — 1 case
SawStop Holding LLC v. Iancu (E.D. Va. 2021). “14] at 15 (citing 37 CFR. § 1.702(e)). The regulation plaintiff cites provides no support for its argument.”
— 37 C.F.R. § 1.702(f) — 1 case
Sykes v. Dudas, 573 F. Supp. 2d 191 (D.D.C. 2008). “The Court is persuaded that the PTO’s interpretation of AIPA § 4405(a), as reflected in its implementing regulation at 37 C.F.R. 1.702, is correct, and at a minimum, entirely reasonable.”
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