Can new arguments be presented during an oral hearing?

Generally, new arguments cannot be presented during an oral hearing. Participants are limited to evidence and arguments previously considered by the primary examiner and presented in the briefs. However, there is an exception for new arguments based on recent relevant decisions.

MPEP 2680 states: “At the oral hearing, each appellant and respondent may only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the briefs.”

The exception is outlined as follows: “Upon a showing of good cause, appellant, respondent and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.”

To learn more:

• oral hearing
• new arguments
• inter partes reexamination
• appeal procedure