MPEP § 1211.04 — Remand by Board for Further Search (Annotated Rules)

§1211.04 Remand by Board for Further Search

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 1211.04, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Remand by Board for Further Search

This section addresses Remand by Board for Further Search. Primary authority: 35 U.S.C. 154(b). Contains: 2 guidance statements and 2 permissions.

Key Rules

Topic

PTAB Jurisdiction

4 rules
StatutoryRecommendedAlways
[mpep-1211-04-462497b746b9220ad9d3f540]
Rare Remand for Examiner to Conduct Further Search
Note:
The Board should rarely remand a case to the examiner for further search, as such actions can extend application pendency and may affect patent term.

It should be extremely rare for the Board to remand a case to the examiner for further search. A remand to the examiner extends the total pendency of an application and may necessitate an extension of the patent term under 35 U.S.C. 154(b). See MPEP § 2710. When such a remand is necessary, the Board should conduct a search (on-line or otherwise) of at least one subclass and cite art from that subclass to demonstrate the basis on which it concludes that a search of this area would be material.The art cited need not be art upon which a rejection can be made.

Jump to MPEP SourcePTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
StatutoryPermittedAlways
[mpep-1211-04-8718602752ca51944b548a59]
Remand to Examiner Extends Pendency and May Extend Patent Term
Note:
A remand by the Board for further search extends an application's pendency and may require extending the patent term.

It should be extremely rare for the Board to remand a case to the examiner for further search. A remand to the examiner extends the total pendency of an application and may necessitate an extension of the patent term under 35 U.S.C. 154(b). See MPEP § 2710. When such a remand is necessary, the Board should conduct a search (on-line or otherwise) of at least one subclass and cite art from that subclass to demonstrate the basis on which it concludes that a search of this area would be material.The art cited need not be art upon which a rejection can be made.

Jump to MPEP SourcePTAB JurisdictionPTAB Contested Case ProceduresPatent Term Basics
StatutoryRecommendedAlways
[mpep-1211-04-d83e356ecffca94fa4358f0c]
Board Must Conduct Search When Remanding for Further Examination
Note:
The Board must conduct a search of at least one subclass and cite relevant art when remanding an application for further examination.

It should be extremely rare for the Board to remand a case to the examiner for further search. A remand to the examiner extends the total pendency of an application and may necessitate an extension of the patent term under 35 U.S.C. 154(b). See MPEP § 2710. When such a remand is necessary, the Board should conduct a search (on-line or otherwise) of at least one subclass and cite art from that subclass to demonstrate the basis on which it concludes that a search of this area would be material.The art cited need not be art upon which a rejection can be made.

Jump to MPEP SourcePTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
StatutoryPermittedAlways
[mpep-1211-04-e66f52bc8431e02715c6113c]
Cited Art Need Not Reject Rejection
Note:
The Board need not cite art that directly supports a rejection, but must conduct a search and demonstrate the materiality of the area searched.

It should be extremely rare for the Board to remand a case to the examiner for further search. A remand to the examiner extends the total pendency of an application and may necessitate an extension of the patent term under 35 U.S.C. 154(b). See MPEP § 2710. When such a remand is necessary, the Board should conduct a search (on-line or otherwise) of at least one subclass and cite art from that subclass to demonstrate the basis on which it concludes that a search of this area would be material.The art cited need not be art upon which a rejection can be made.

Jump to MPEP SourcePTAB JurisdictionPTAB Contested Case ProceduresPatent Term Basics

Citations

Primary topicCitation
PTAB Jurisdiction35 U.S.C. § 154(b)
PTAB JurisdictionMPEP § 2710

Source Text from USPTO’s MPEP

This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.

BlueIron Last Updated: 2025-12-31