---
kind: "section"
citation: "37 C.F.R. § 1.704"
title: "37"
number: "1.704"
heading: "Reduction of period of adjustment of patent term."
url: "https://uscodex.org/cfr/37/1.704"
---

# §1.704. Reduction of period of adjustment of patent term.

- (a) The period of adjustment of the term of a patent under [§§ 1.703(a) through (e)](/cfr/37/1.703.md?p=a..e) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution (processing or examination) of the application.
- (b) With respect to the grounds for adjustment set forth in [§§ 1.702(a) through (e)](/cfr/37/1.702.md?p=a..e), and in particular the ground of adjustment set forth in [§ 1.702(b)](/cfr/37/1.702.md?p=b), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of three months that are taken to reply to any notice or action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the date the notice or action was mailed or given to the applicant, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date that is three months after the date of mailing or transmission of the Office communication notifying the applicant of the rejection, objection, argument, or other request and ending on the date the reply was filed. The period, or shortened statutory period, for reply that is set in the Office action or notice has no effect on the three-month period set forth in this paragraph.
- (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](/cfr/37/1.703.md) to the extent that the periods are not overlapping:
  - (1) Suspension of action under [§ 1.103](/cfr/37/1.103.md) at the applicant's request, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the date a request for suspension of action under [§ 1.103](/cfr/37/1.103.md) was filed and ending on the date of the termination of the suspension;
  - (2) Deferral of issuance of a patent under [§ 1.314](/cfr/37/1.314.md), in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) 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](/cfr/37/1.314.md) was filed and ending on the earlier of the date a request to terminate the deferral was filed or 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](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the date of abandonment or the day after the date the issue fee was due and ending on 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 date of mailing of a notice of abandonment, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date two months from the date of mailing 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;
  - (5) Conversion of a provisional application under [35 U.S.C. 111(b)](/usc/35/111.md?p=b) to a nonprovisional application under [35 U.S.C. 111(a)](/usc/35/111.md?p=a) pursuant to [35 U.S.C. 111(b)(5)](/usc/35/111.md?p=b-5), in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the date the application was filed under [35 U.S.C. 111(b)](/usc/35/111.md?p=b) and ending on the date a request in compliance with [§ 1.53(c)(3)](/cfr/37/1.53.md?p=c-3) to convert the provisional application into a nonprovisional application was filed;
  - (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](/usc/35/132.md) or notice of allowance under [35 U.S.C. 151](/usc/35/151.md) 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](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under [35 U.S.C. 111(a)](/usc/35/111.md?p=a) or the date of commencement of the national stage under 35 U.S.C. [371(b)](/usc/35/371.md?p=b) or [(f)](/usc/35/371.md?p=f) in an international application and ending on the date the preliminary amendment or other preliminary paper was filed;
  - (7) Submission of a reply having an omission ([§ 1.135(c)](/cfr/37/1.135.md?p=c)), in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date the reply having an omission was filed and ending on the date that the reply or other paper correcting the omission was filed;
  - (8) Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or other such paper was filed;
  - (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)](/cfr/37/41.50.md?p=b) of this title or statement under [§ 41.50(c)](/cfr/37/41.50.md?p=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](/usc/35/132.md) or a notice of allowance under [35 U.S.C. 151](/usc/35/151.md) 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](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date of the decision by the Patent Trial and Appeal Board or by a Federal court and ending on date the amendment or other paper was filed;
  - (10) Submission of an amendment under [§ 1.312](/cfr/37/1.312.md) or other paper, other than an amendment under [§ 1.312](/cfr/37/1.312.md) or other paper expressly requested by the Office or a request for continued examination in compliance with [§ 1.114](/cfr/37/1.114.md), after a notice of allowance has been given or mailed, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under [35 U.S.C. 151](/usc/35/151.md) and ending on the date the amendment under [§ 1.312](/cfr/37/1.312.md) or other paper was filed;
  - (11) Failure to file an appeal brief in compliance with [§ 41.37](/cfr/37/41.37.md) of this chapter within three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under [35 U.S.C. 134](/usc/35/134.md) and [§ 41.31](/cfr/37/41.31.md) of this chapter, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under [35 U.S.C. 134](/usc/35/134.md) and [§ 41.31](/cfr/37/41.31.md) of this chapter, and ending on the date an appeal brief in compliance with [§ 41.37](/cfr/37/41.37.md) of this chapter or a request for continued examination in compliance with [§ 1.114](/cfr/37/1.114.md) was filed;
  - (12) Submission of a request for continued examination under [35 U.S.C. 132(b)](/usc/35/132.md?p=b) after any notice of allowance under [35 U.S.C. 151](/usc/35/151.md) has been mailed, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under [35 U.S.C. 151](/usc/35/151.md) and ending on the date the request for continued examination under [35 U.S.C. 132(b)](/usc/35/132.md?p=b) was filed;
  - (13) Failure to provide an application in condition for examination as defined in [paragraph (f)](#f) of this section within eight months from either the date on which the application was filed under [35 U.S.C. 111(a)](/usc/35/111.md?p=a) or the date of commencement of the national stage under 35 U.S.C. [371(b)](/usc/35/371.md?p=b) or [(f)](/usc/35/371.md?p=f) in an international application, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under [35 U.S.C. 111(a)](/usc/35/111.md?p=a) or the date of commencement of the national stage under 35 U.S.C. [371(b)](/usc/35/371.md?p=b) or [(f)](/usc/35/371.md?p=f) in an international application and ending on the date the application is in condition for examination as defined in [paragraph (f)](#f) of this section; and
  - (14) Further prosecution via a continuing application, in which case the period of adjustment set forth in [§ 1.703](/cfr/37/1.703.md) shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
- (d)
  - (1) A paper containing only an information disclosure statement in compliance with §§ [1.97](/cfr/37/1.97.md) and [1.98](/cfr/37/1.98.md) will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs [(c)(6)](#c-6), [(c)(8)](#c-8), [(c)(9)](#c-9), or [(c)(10)](#c-10) of this section, and a request for continued examination in compliance with [§ 1.114](/cfr/37/1.114.md) with no submission other than an information disclosure statement in compliance with §§ [1.97](/cfr/37/1.97.md) and [1.98](/cfr/37/1.98.md) will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under [paragraph (c)(12)](#c-12) of this section, if the paper or request for continued examination is accompanied by a statement that each item of information contained in the information disclosure statement:
    - (i) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in [§ 1.56(c)](/cfr/37/1.56.md?p=c) more than thirty days prior to the filing of the information disclosure statement; or
    - (ii) Is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in [§ 1.56(c)](/cfr/37/1.56.md?p=c) more than thirty days prior to the filing of the information disclosure statement.
  - (2) **The thirty-day period set forth in paragraph (d)(1) of this section is not extendable.**
  - (3) The statement under [paragraph (d)(1)](#d-1) of this section must be submitted on the Office form (PTO/SB/133) provided for such a patent term adjustment statement using the appropriate document code (PTA.IDS). Otherwise, the paper or request for continued examination will be treated as not accompanied by a statement under [paragraph (d)(1)](#d-1) of this section unless an application for patent term adjustment, in compliance with [§ 1.705(b)](/cfr/37/1.705.md?p=b), is filed, establishing that the paper or request for continued examination was accompanied by a statement in compliance with [paragraph (d)(1)](#d-1) of this section. No changes to statements on this Office form may be made. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of this form, whether by a practitioner or non-practitioner, constitutes a certification under [§ 11.18(b)](/cfr/37/11.18.md?p=b) of this chapter that the existing text and any certification statements on this form have not been altered.
- (e) The submission of a request under [§ 1.705(c)](/cfr/37/1.705.md?p=c) for reinstatement of reduced patent term adjustment will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under [paragraph (c)(10)](#c-10) of this section.
- (f) An application filed under [35 U.S.C. 111(a)](/usc/35/111.md?p=a) is in condition for examination when it includes a specification, including at least one claim and an abstract ([§ 1.72(b)](/cfr/37/1.72.md?p=b)), and has papers in compliance with [§ 1.52](/cfr/37/1.52.md), drawings (if any) in compliance with [§ 1.84](/cfr/37/1.84.md), any English translation required by [§ 1.52(d)](/cfr/37/1.52.md?p=d) or [§ 1.57(a)](/cfr/37/1.57.md?p=a), a “Sequence Listing” in compliance with [§§ 1.821 through 1.825](/cfr/37/1.821..1.825.md) (if applicable), a “Sequence Listing XML” in compliance with [§§ 1.831 through 1.835](/cfr/37/1.831..1.835.md) (if applicable), an inventor's oath or declaration or an application data sheet containing the information specified in [§ 1.63(b)](/cfr/37/1.63.md?p=b), the basic filing fee (§ [1.16(a)](/cfr/37/1.16.md?p=a) or [(c)](/cfr/37/1.16.md?p=c)), the search fee (§ [1.16(k)](/cfr/37/1.16.md?p=k) or [(m)](/cfr/37/1.16.md?p=m)), the examination fee (§ [1.16(o)](/cfr/37/1.16.md?p=o) or [(q)](/cfr/37/1.16.md?p=q)), any certified copy of the previously filed application required by [§ 1.57(a)](/cfr/37/1.57.md?p=a), and any application size fee required by the Office under [§ 1.16(s)](/cfr/37/1.16.md?p=s). An international application is in condition for examination when it has entered the national stage as defined in [§ 1.491(b)](/cfr/37/1.491.md?p=b), and includes a specification, including at least one claim and an abstract ([§ 1.72(b)](/cfr/37/1.72.md?p=b)), and has papers in compliance with [§ 1.52](/cfr/37/1.52.md), drawings (if any) in compliance with [§ 1.84](/cfr/37/1.84.md), a “Sequence Listing” in compliance with [§§ 1.821 through 1.825](/cfr/37/1.821..1.825.md) (if applicable), a “Sequence Listing XML” in compliance with [§§ 1.831 through 1.835](/cfr/37/1.831..1.835.md) (if applicable), an inventor's oath or declaration or an application data sheet containing the information specified in [§ 1.63(b)](/cfr/37/1.63.md?p=b), the search fee ([§ 1.492(b)](/cfr/37/1.492.md?p=b)), the examination fee ([§ 1.492(c)](/cfr/37/1.492.md?p=c)), and any application size fee required by the Office under [§ 1.492(j)](/cfr/37/1.492.md?p=j). An application shall be considered as having papers in compliance with [§ 1.52](/cfr/37/1.52.md), drawings (if any) in compliance with [§ 1.84](/cfr/37/1.84.md), and a “Sequence Listing” in compliance with [§§ 1.821 through 1.825](/cfr/37/1.821..1.825.md) (if applicable), or a “Sequence Listing XML” in compliance with [§§ 1.831 through 1.835](/cfr/37/1.831..1.835.md) (if applicable), for purposes of this [paragraph (f)](#f) on the filing date of the latest reply (if any) correcting the papers, drawings, “Sequence Listing,” or “Sequence Listing XML” that is prior to the date of mailing of either an action under [35 U.S.C. 132](/usc/35/132.md) or a notice of allowance under [35 U.S.C. 151](/usc/35/151.md), whichever occurs first.

## Notes

### Amendments

[65 FR 56393, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 69 FR 50002, Aug. 12, 2004; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 76 FR 74702, Dec. 1, 2011; 77 FR 46628, Aug. 6, 2012; 77 FR 49360, Aug. 16, 2012; 78 FR 19420, Apr. 1, 2013; 78 FR 62408, Oct. 21, 2013; 80 FR 1356, Jan. 9, 2015; 85 FR 36341, June 16, 2020; 87 FR 30818, May 20, 2022; 88 FR 39177, June 15, 2023]

### Authority

Authority: 35 U.S.C. 2(b)(2), 154, and 156.

### Source

Source: 52 FR 9394, Mar. 24, 1987, unless otherwise noted.

### Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

### Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

### Amendments

[65 FR 56393, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 69 FR 50002, Aug. 12, 2004; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 76 FR 74702, Dec. 1, 2011; 77 FR 46628, Aug. 6, 2012; 77 FR 49360, Aug. 16, 2012; 78 FR 19420, Apr. 1, 2013; 78 FR 62408, Oct. 21, 2013; 80 FR 1356, Jan. 9, 2015; 85 FR 36341, June 16, 2020; 87 FR 30818, May 20, 2022; 88 FR 39177, June 15, 2023]