Can I submit new claims after filing an appeal brief?

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.

While you can submit new claims after filing an appeal brief, the Board of Patent Appeals and Interferences (BPAI) is not obligated to consider them. According to 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.”

However, certain limited types of amendments may be remanded to the examiner for consideration. These include canceling claims (where it doesn’t affect other pending claims) or rewriting dependent claims in independent form. It’s important to note that submitting new claims that significantly change the scope of the appeal may result in the appeal being dismissed.