1205.01(b)(2) Preferred Practices for Amending an Application during Appeal
The Board may entertain a request for remand to allow the examining attorney to consider a proposed amendment when the request for remand is filed before the Board issues a final decision, see TBMP § 1218. Recently in In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *1 (TTAB 2020), the Board clarified:
- As a best practice, an applicant seeking to obviate a refusal by proposing an amendment to an application should propose the amendment as early as possible during prosecution. If that does not occur, then the Board strongly prefers that an applicant make such an amendment in a request for reconsideration filed soon after the issuance of a final Office action but prior to the applicant’s deadline for filing a notice of appeal. Doing so provides an opportunity for the issue to be addressed before the appeal stage. If an applicant has missed that opportunity, then the next preferred alternative is to file a separately captioned request for remand and suspension of proceedings with the Board, ideally prior to the deadline for filing an appeal brief, so that the Board can make a prompt ruling on the request and the examining attorney does not have to draft a potentially unnecessary appeal brief. If the Board decides to remand the application to the examining attorney, it will suspend the appeal for consideration by the examining attorney of an amendment which might obviate the refusal (and thus the appeal). Embedded amendments in an appeal brief are not prohibited but they are discouraged because they may be inadvertently overlooked by the Board before the Examining Attorney files a brief; if noticed, they may needlessly delay the proceeding. In instances such as this where the Examining Attorney does not consent to a proposed amendment embedded in a brief but objects, the Board typically treats the proposed amendment as a request for remand for further examination, and considers whether good cause has been shown.
However, occasionally an applicant fails to follow the preferred practices noted above and will include an amendment as part of its brief. If this amendment is noted by the Board (and frequently it will not be noted if it is not made by a separate submission), the Board will treat the proposed amendment as a request for remand, and consider whether good cause has been shown in determining the request. See TBMP § 1205.01(b)(1). If the Board does not note the request, but the examining attorney, upon reviewing applicant’s appeal brief, considers the amendment and allows it, the amendment will be entered. In such a circumstance, the preferred practice is for the examining attorney to specifically state in their brief that the amendment is accepted. However, if the examining attorney makes no reference to the amendment and merely treats the application as having been amended, the Board will treat the amendment as having been accepted. [ Note 1.] If the examining attorney, upon noting the proposed amendment in the applicant’s brief, believes that the amendment raises a new issue or that further examination would be required as a result of the amendment, the examining attorney should contact the Board and advise that the brief contains an amendment that should be considered as a request for remand. See TBMP § 1205.01(a).
NOTES:
1. See In re S. Malhotra & Co., 128 USPQ2d 1100, 1102 n.3 (TTAB 2018) (refusals to register based on requirements for translation and transliteration statements deemed moot because examining attorney suggested statements during prosecution, applicant accepted them in its brief, and the Board entered them); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1512 n.2 (TTAB 2001) (one ground for refusal was requirement for translation of mark; because applicant offered translation in appeal brief and examining attorney did not address the issue in his brief, Board treated requirement as moot).