Can a remand by the Board be appealed?
No, a remand by the Board of Patent Appeals and Interferences (BPAI) cannot be appealed. MPEP 1211 clearly states: “As specified by 37 CFR 41.50(e), a remand by the Board is not appealable (i.e. not final for purposes of judicial review).” This means that when the Board issues a remand, the decision is not considered…
Read MoreCan the Board or Director remand a proceeding to consider new evidence?
Yes, the Board of Patent Appeals and Interferences (BPAI) or the Director of the USPTO has the authority to remand a proceeding to allow the examiner to consider new evidence. MPEP § 1211.03 states: “If such evidence has not been treated by the examiner, the Board or the Director may remand the proceeding to permit…
Read MoreWhat is the Board’s obligation regarding new or amended claims during an appeal?
The Board of Patent Appeals and Interferences (BPAI) has no obligation to consider new or amended claims submitted while it has jurisdiction of an appeal. This is clearly stated in MPEP 1211.02: “There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal.” This…
Read MoreWhat types of amendments may be remanded for consideration during an appeal?
According to MPEP 1211.02, certain types of amendments may be remanded for consideration by the examiner during an appeal. Specifically: “[A] proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite…
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