[Editor Note: 37 CFR 1.704(c)(12), as reproduced below, include changes applicable only to applications in which a request for continued examination under 35 U.S.C. 132(b) and 37 CFR 1.114 was filed on or after March 10, 2015. In addition,37 CFR 1.704(c)(11), (c)(13), (c)(14), and (f), as reproduced below, include changes applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and to international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013. For 37 CFR 1.704(c)(11) and (c)(12) in effect for applications filed before (and international applications in which the national stage commenced before) December 18, 2013, and in which a notice of appeal was filed on or after September 17, 2012, see 37 CFR 1.704 (2012-09-17 thru 2013-12-17). For 37 CFR 1.704(c)(11) in effect for applications in which there was a notice of appeal filed prior to September 17, 2012, see 37 CFR 1.704(c)(11)(pre-2012-09-17).37 CFR 1.704(e) below includes changes applicable only to applications in which a notice of allowance was mailed on or after April 1, 2013. For 37 CFR 1.704(e) in effect for applications in which there was a notice of allowance mailed prior to April 1, 2013, see 37 CFR 1.704(e)(pre-2013-03-31). 37 CFR 1.704(c)(10)(ii) below includes changes applicable only to patent applications in which a notice of appeal was filed on or after September 17, 2012. For 37 CFR 1.704(c)(10) in effect for applications in which there was a notice of appeal filed prior to September 17, 2012, see 37 CFR 1.704(c)(10) (pre-2012-09-17).]

(a) The period of adjustment of the term of a patent under § 1.703(a) through (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), and in particular the ground of adjustment set forth in § 1.702(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 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 to the extent that the periods are not overlapping:

(1) Suspension of action under § 1.103 at the applicant’s request, 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 suspension of action under § 1.103 was filed and ending on the date of the termination of the suspension;
(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;
(5) Conversion of a provisional application under 35 U.S.C. 111(b) to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 U.S.C. 111(b)(5), 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 the application was filed under 35 U.S.C. 111(b) and ending on the date a request in compliance with § 1.53(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 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;

(7) Submission of a reply having an omission (§ 1.135(c)), 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 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 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) 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;

(11) Failure to file an appeal brief in compliance with § 41.37 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 and § 41.31 of this chapter, 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 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 and § 41.31 of this chapter, and ending on the date an appeal brief in compliance with § 41.37 of this chapter or a request for continued examination in compliance with § 1.114 was filed;
(12) Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed, 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 of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed;
(13) Failure to provide an application in condition for examination as defined in paragraph (f) of this section within eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application, 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 that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination as defined in paragraph (f) of this section; and
(14) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 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 and 1.98 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)(8), (c)(9), or (c)(10) of this section, and a request for continued examination in compliance with § 1.114 with no submission other than an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (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 an individual designated in § 1.56(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) 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.

(e) The submission of a request under § 1.705(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) of this section.
(f) An application filed under 35 U.S.C. 111(a) is in condition for examination when the application includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, any English translation required by § 1.52(d) or §1.57(a), a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor's oath or declaration or an application data sheet containing the information specified in § 1.63(b), the basic filing fee (§ 1.16(a) or § 1.16(c) ), the search fee (§ 1.16(k) or § 1.16(m)), the examination fee (§ 1.16(o) or §1.16(q)), any certified copy of the previously filed application required by § 1.57(a), and any application size fee required by the Office under § 1.16(s). An international application is in condition for examination when the application has entered the national stage as defined in § 1.491(b), and includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor's oath or declaration or an application data sheet containing the information specified in § 1.63(b), the search fee (§ 1.492(b)), the examination fee (§ 1.492(c)), and any application size fee required by the Office under § 1.492(j). An application shall be considered as having papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, and a sequence listing in compliance with § 1.821 through § 1.825 (if applicable) for purposes of this paragraph on the filing date of the latest reply (if any) correcting the papers, drawings, or sequence listing that is prior to the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first.

Example A:

An applicant based in Chicago, Illinois, directs U.S. counsel to prepare, file and prosecute an application in the United States Patent and Trademark Office (USPTO). The U.S. counsel subsequently sends the application to foreign counsel for filing and prosecution in foreign jurisdictions. The U.S. counsel directs foreign counsel to provide copies of all communications from the foreign office (by fax or overnight mail) within seven days of receipt thereof, and expressly reserves all decision-making authority as to prosecution of the U.S. and foreign applications.
On January 5, 2002, a foreign counsel in Germany receives a communication from the European Patent Office (EPO) that includes a list of citations of patents. On January 8, the foreign counsel, pursuant to the standing instructions of U.S. counsel, sends by overnight mail, a copy of the communication from the EPO. The document is received by U.S. counsel on January 12, 2002. On January 30, the U.S. counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the U.S. counsel, which was received at the USPTO on February 11, 2002.

Answer to Example A:

The thirty-day period would be calculated from January 12, 2002 . As such, the IDS received on February 11, 2002 would be filed within the thirty-day period in 37 CFR 1.704(d), and thus would not result in a reduction of any patent term adjustment pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

In this example, the foreign counsel has no substantive role in the prosecution of the U.S. application. The explicitly defined role of the foreign counsel relative to the U.S. counsel in combination with the practice in the described fact pattern removes any potential doubt as to the role of the foreign counsel. For these reasons, the foreign counsel is not deemed a person who is substantially involved in the U.S. application under 37 CFR 1.56(c).

Example B:

An applicant based in Paris, France, directs French counsel to prepare, file and prosecute an application in the European Patent Office (EPO). The EPO application is then sent to U.S. counsel by French counsel to be reviewed, edited, and prepared for filing in the United States Patent and Trademark Office (USPTO). The counsel works with the French counsel to review the edited application, and then files the application at the USPTO. The review and editing of the U.S. application filed at the USPTO also leads the French counsel to amend its EPO application.
On January 5, 2002, the French counsel receives a search report from the European Patent Office that includes a list of six patents. On January 20, 2002, the U.S. counsel receives from French counsel (by overnight mail) a copy of the communication from the EPO and suggests that the U.S. counsel review the search report and “take appropriate action.” On January 25, 2002, the French counsel provides a copy of the search report to the applicant. On January 30, 2002, the U.S. counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the U.S. counsel, which is received at the USPTO on February 14, 2002

Answer to Example B:

The thirty-day period would be calculated from January 5, 2002. As such, the submission of the IDS would not be received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

In this example, the USPTO would consider the French counsel to have been a party within the meaning of 37 CFR 1.56(c). The French counsel, based on the above facts, played a substantive role in the preparation and prosecution of the U.S. application (e.g., the French counsel drafted the original application, worked with U.S. counsel to amend the application and subsequently amended the EPO application based on the work product produced with U.S. counsel).

Example C:

An applicant based in Chicago, Illinois, hires U.S. counsel to prepare an application suitable for filing in the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). The U.S. counsel engages a German attorney to assist in the review and editing of the application to take account of issues relevant to EPO practice. The U.S. counsel then reviews the edited application, approves the changes, and files it at the USPTO. The U.S. counsel then directs the German attorney to file the application in the EPO. During prosecution of the U.S. case, the U.S. counsel receives an Office action citing three patents.

On December 1, 2001, the U.S. counsel sends the three patents to the German attorney for review and appropriate action. On January 5, 2002, the German attorney receives a search report from the EPO that cites the three previously cited patents, plus a fourth patent, which are all designatinged all as “X” references. On January 15, 2002, the German attorney reviews the fourth patent and compares it to the three patents cited in the U.S. prosecution. The German attorney concludes that the fourth patent is duplicative of one of the three patents, and takes no further action.

On March 1, 2002, during a routine status inquiry, the U.S. counsel is informed of the citation of the fourth patent by the EPO and the decision of the German attorney that the information in the newly cited patent was duplicative of the three patents previously cited by the USPTO. The U.S. counsel also obtains copies of the newly cited patent on this date. On March 5, 2002, the U.S. counsel files an IDS containing the newly cited patent, which is received at the USPTO on the same date.

Answer to Example C:

The thirty-day period would be calculated from January 5, 2002 . As such, the submission of the IDS would be determined to have not been received, received within the thirty-day period in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

In this example, the USPTO would consider the participation of the German attorney in the prosecution and decision-making as to the relevance of the newly cited art vis-à-vis the previously cited three patents to be a substantive participation in the U.S. prosecution. As such, the German attorney would be considered by the USPTO to be a party covered by 37 CFR 1.56(c). Accordingly, evaluation of compliance with 37 CFR 1.704(d) would consider the date that the foreign counsel first learned of the fourth patent (i.e., the newly cited reference).

37 CFR 1.704(e) provides that a submission of a request under 37 CFR 1.705(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 37 CFR 1.704(c)(10). The Office will not deem such a failure to engage in reasonable efforts to conclude processing or examination of the application under 37 CFR 1.704(c)(10) because the statute expressly requires that all such requests be filed prior to the issuance of the patent. Other papers concerning patent term adjustment (e.g., status letters, untimely applications for patent term adjustment, requests for reconsideration of the Office’s decisions on applications for patent term adjustment, petitions under 37 CFR 1.181, 1.182, or 1.183 concerning patent term adjustment, or miscellaneous letters concerning patent term adjustment), however, will be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(10).