Can new evidence be included in a respondent brief?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 9 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 evidence cannot be included in a respondent brief during an inter partes reexamination appeal. The MPEP clearly states in reference to 37 CFR 41.68(b)(2) : “A respondent brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence.” This restriction ensures that the appeal process focuses on the evidence and arguments already present in the record. Any new evidence should have been submitted earlier in the examination process, following the rules outlined in 37 CFR 1.116 for submissions after final action but before or on the same date of filing an appeal, or 37 CFR 41.63 for submissions after the date of filing the appeal. Related Rules from the Manual of Patent Examining Procedure 9 rules Collapse Office Does Not Accept Inter Partes Reexamination Requests Filed After September 16, 2012 MPEP 2675.01 Inter Partes Reexamination Requests Not Accepted After September 16, 2012 MPEP 2675 Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2675 No Inter Partes Reexamination After September 16, 2012 MPEP 2675.01 No New Evidence In Appeal Brief MPEP 1205 Prohibited No New Evidence in Briefs MPEP 1205.02 Decision on Appeal Status: Application Remains Under Appeal MPEP 1204.02 Permitted Content Requirements for Appeal Briefs MPEP 1205 Required Compliant Appeal Brief Requirement MPEP 1205.02 Other Related FAQs 5 FAQs Collapse What happens if a respondent brief does not comply with the requirements? What are the consequences of not filing a respondent brief in inter partes reexamination? Can new grounds of rejection be proposed in a respondent brief? What are the required contents of a respondent brief in an inter partes ree...