Can new amendments or evidence be included in an appellant brief?
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.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2675 - Appellant Brief,
Patent Law,
Patent Procedure