Avoiding remand when some claims are not appealed

What’s more frustrating than the long wait for an appeal decision from the BPAI? How about getting all the way to the Board, only to have the Board issue a remand rather than a decision?

The most common reason for a remand that is the fault of the Applicant is probably a defective appeal brief. These errors are mostly avoidable if you pay close attention to the rules governing briefs in MPEP 1205.02. A remand can also result from improper handling of claims not on appeal. Because the relevant case law for handling unappealed claims is not referenced in the MPEP, I don't think this procedure is well understood.

In this post, I'll first tell you the procedure which should definitely avoid a remand. Then I'll explain the finer points for those of you that are interested in more detail.

In the BPAI decision Ex parte Ghuman, the Applicant appealed only claims 1-4 even though claims 1-20 were pending. The Board remanded the application (rather than reaching a decision) with instructions for the Examiner to cancel the non-appealed claims. There was no confusion here about whether or not the Applicant intended to appeal claims 5-20 since the Status of the Claims, Grounds of Rejection, and Arguments sections of the brief were all consistent. The Board noted these underlying facts, yet ruled that the Applicant should have filed an amendment to cancel any claims not on appeal.

The take-away of this decision – a decision which is identified as precedential – seems to be: to avoid the possibility of remand by the BPAI, cancel non-appealed claims. The rules allow such cancellation before filing the brief (under CFR 1.116) or even after (under CFR 41.33).

Ex parte Ghuman seems to be controlling law for what happens once the case reaches the Board. However, the PTO seems to have adopted a "cancel on behalf of the Applicants" policy which avoids this harsh result. According to a BPAI FAQ:

If the appellant clearly identified fewer than all of the rejected claims as being appealed in the appeal brief or other papers, the Office will consider this as an authorization to cancel the rejected claims that are not on appeal before the application is forwarded to the BPAI for a decision. See Ex parte Ghuman (Bd. Pat. App. & Int. 2008)(precedential). The examiner will enter an examiner’s amendment to cancel the rejected claims that are not being appealed.

The FAQ also notes that instead of canceling claims, the Examiner will reject the brief as defective "if the applicant’s intention to appeal the rejection of fewer than all of the pending claims is unclear from the appeal brief."

I like the PTO's policy. Canceling claims ahead of time which would be canceled later seems fair to me. And I wholeheartedly agree with the policy of addressing errors or inconsistencies in the record before jurisdiction passes to the Board.

So maybe you don't really need to file an amendment canceling claims after all – as long as the Examiner knows and applies this PTO policy, that is. (This policy is not in the MPEP, by the way.)

What if the Examiner forgets to cancel your claims? If you're lucky, you may still dodge a remand. A recent survey of decisions indicates that the Board isn't uniformly applying its precedent.

In situations where it is clear what claims are intended to be appealed, the Board has in some cases rendered a decision with instructions for the Examiner to cancel the non-appealed claims (Ex parte Vosaya), and in others remanded rather than reach a decision (Ex parte Bhatia, Ex parte Almstrand).

In situations where it is not clear what claims are intended to be appealed, the Board has in some cases (Ex parte Boneh, Ex parte Marin, Ex parte Maule) rendered a decision on the appealed claims and told the Examiner to cancel what the BPAI finds to be the non-appealed claims, and in others (Ex parte Bolle) remanded rather than reach a decision.

The most conservative approach is to cancel the claims yourself rather than relying on the kindness of the Examiner or the Board.