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DOC/PTO RIN: 0651-AD38 Publication ID: Fall 2019 
Title: ●Patent Term Adjustment Reductions in View of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu 

The USPTO is revising the rules of practice pertaining to the patent term adjustment (PTA) provisions of 35 U.S.C. 154(b) in view of the decision by the Federal Circuit in Supernus Pharm., Inc. v. Iancu. The Federal Circuit in Supernus held that a reduction of PTA under 35 U.S.C. 154(b)(2)(C) must be equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application. The regulations pertaining to a reduction of PTA due a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application are set forth in 37 CFR 1.704. Several provisions in 37 CFR 1.704 specify a period of reduction corresponding to the impact on the Office due to an applicant’s failure to engage in reasonable efforts to conclude prosecution, rather than the period from the beginning to the end of the applicant’s failure to engage in reasonable efforts to conclude prosecution as provided for in Supernus. Therefore, the Office is proposing to revise these provisions of 37 CFR 1.704 for consistency with the Federal Circuit’s decision in Supernus.

Agency: Department of Commerce(DOC)  Priority: Substantive, Nonsignificant 
RIN Status: First time published in the Unified Agenda Agenda Stage of Rulemaking: Proposed Rule Stage 
Major: No  Unfunded Mandates: No 
EO 13771 Designation: Not subject to, not significant 
CFR Citation: 37 CFR 1.704   
Legal Authority: 35 U.S.C. 2(b)(2)   
Legal Deadline:  None
Action Date FR Cite
NPRM  10/04/2019  84 FR 53090   
NPRM Comment Period End  12/03/2019 
Final Action  05/00/2020 
Final Action Effective  06/00/2020 
Regulatory Flexibility Analysis Required: No  Government Levels Affected: None 
Small Entities Affected: No  Federalism: No 
Included in the Regulatory Plan: No 
RIN Data Printed in the FR: No 
Agency Contact:
Raul Tamayo
Senior Legal Advisor
Department of Commerce
Patent and Trademark Office
P. O. Box 1450,
Alexandria, VA 22313-1450
Phone:571 272-7728
Fax:571 273-7728