Can new amendments or evidence be included in an appellant brief?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. No, new amendments or evidence cannot be included in an appellant brief for an inter partes reexamination. The MPEP clearly states: “Pursuant to 37 CFR 41.67(c)(2), the brief is not to include any (A) new or non-admitted (non-entered) amendment, or (B) new or non-admitted (non-entered) affidavit or other evidence.” If an examiner wishes to have the patent owner provide an amendment or evidence during the appeal stage, they must follow a specific process: Reopen prosecution Accept the amendment or evidence for entry Permit timely comment on the new amendment or evidence by the third party requester Issue a new Action Closing Prosecution (ACP) For more details on this process, refer to MPEP § 2673.01 . Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Inter Partes Reexamination Requests Not Accepted After September 16, 2012 MPEP 2675 Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2673 Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2675 No Inter Partes Reexamination After September 16, 2012 MPEP 2673 No New Evidence in Briefs MPEP 1205.02 No New Evidence In Appeal Brief MPEP 1205 Prohibited Content Requirements for Appeal Briefs MPEP 1205 Required Permitted Additional Brief Elements MPEP 1205.02 Permitted Amendments Require Examiner Entry MPEP 1205.02 Filing Appeal Brief Within Two Months MPEP 1204 Required Other Related FAQs 5 FAQs Collapse What should be included in an appellant brief for an inter partes reexamination? What is the required fee for filing an appellant brief in inter partes reexamination? What are the time limits for filing an appellant brief in an inter partes reexamination? What are the consequences...