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…
Read MoreHow should an examiner address new arguments or evidence in an examiner’s answer?
In an inter partes reexamination proceeding, examiners are not permitted to introduce new grounds of rejection or new findings of patentability in an examiner’s answer. According to MPEP 2677, the examiner’s answer must include an explicit statement that: “It does not contain any new ground of rejection, and it does not contain any new finding…
Read MoreCan new arguments be introduced in a reply brief or oral hearing before the PTAB?
The Patent Trial and Appeal Board (PTAB) has specific rules regarding the introduction of new arguments in reply briefs and oral hearings: For reply briefs: MPEP 1002.02(j) states, “Requests in a reply brief to consider a new argument not previously raised in an appeal brief or not responsive to an argument raised by the examiner.…
Read MoreCan I present new arguments or evidence during an oral hearing for a patent appeal?
Generally, you are limited to presenting arguments and evidence that have already been submitted in your brief or reply brief during an oral hearing. The MPEP states: “At the oral hearing, appellant may only rely on Evidence that has been previously entered and considered by the primary examiner and present argument that has been relied…
Read MoreAre there any exceptions to the rule against new arguments in a rehearing request?
Yes, there are specific exceptions to the general rule against new arguments in a rehearing request. According to MPEP 1214.03, the following exceptions are permitted: New arguments based on a recent relevant decision of either the Board or a Federal Court New arguments responding to a new ground of rejection designated pursuant to 37 CFR…
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