Can new evidence be included in a respondent brief?
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…
Read MoreCan 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…
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 MoreWhat is the process for admitting new evidence in a patent appeal?
The process for admitting new evidence in a patent appeal involves several steps and considerations. According to MPEP 1206: “If the examiner determines that the evidence should be entered, prosecution must be reopened if the evidence would at least raise a substantial question regarding the propriety of a pending rejection.” The examiner must first determine…
Read MoreCan new evidence be submitted in a reply brief during a patent appeal?
No, new evidence is not permitted in a reply brief during a patent appeal. The MPEP 1208 clearly states: “New or non-admitted affidavits, and/or other evidence are not permitted in a reply brief.” Any new amendments must be submitted separately from the reply brief, and their entry is subject to the provisions of 37 CFR…
Read MoreCan new evidence be included in a patent appeal brief?
No, new evidence cannot be included in a patent appeal brief. MPEP 1205.02 clearly states: “37 CFR 41.37(c)(2) prohibits the inclusion in a brief of any new or non-admitted amendment, affidavit or other evidence.” If an appellant wishes to have new evidence considered, they must follow a different process: The appellant must seek review of…
Read MoreCan new evidence be introduced in a civil action under 35 U.S.C. 145?
Yes, new evidence can be introduced in a civil action under 35 U.S.C. 145. This is one of the key differences between a civil action and an appeal to the Federal Circuit. The MPEP 1216 states: “In an appeal to the Federal Circuit, the record is limited to the record developed before the Board. In…
Read MoreWhat happens if new evidence is filed after the appeal brief in a patent application?
If new evidence is filed after the appeal brief in a patent application, the examiner must determine whether the evidence overcomes all rejections. According to MPEP 1206: “If the examiner determines that the evidence overcomes all rejections, the examiner should issue a new Office action withdrawing all previous rejections and either allowing the application or…
Read MoreCan new evidence be introduced in a 35 U.S.C. 145 action?
Yes, in an action under 35 U.S.C. 145, the plaintiff is allowed to introduce new evidence that was not previously presented to the U.S. Patent and Trademark Office (USPTO). This is one of the key advantages of pursuing a civil action under 35 U.S.C. 145 instead of a direct appeal to the Federal Circuit. The…
Read MoreCan the Board or Director remand a proceeding to consider new evidence?
Yes, the Board of Patent Appeals and Interferences (BPAI) or the Director of the USPTO has the authority to remand a proceeding to allow the examiner to consider new evidence. MPEP § 1211.03 states: “If such evidence has not been treated by the examiner, the Board or the Director may remand the proceeding to permit…
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