Go to MPEP - Table of Contents
2675.01 Respondent Brief [Added R-2] - 2600 Optional Inter Partes Reexamination
2675.01 Respondent Brief [Added R-2]
37 CFR 1.963 Time for filing briefs in inter partes reexamination.
*****
(b) Once an appellant's brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant's brief. The time for filing a respondent's brief may not be extended.
*****
37 CFR 1.967 Respondent's brief in inter partes reexamination.
(a) Respondent(s) in an inter partes reexamination appeal may once, within the time limit for filing set forth in § 1.963, file a respondent brief in triplicate and serve the brief on all parties in accordance with § 1.903. The brief must be signed by the party, or the party's duly authorized attorney or agent, and must be accompanied by the requisite fee set forth in § 1.17(c). The brief must state the authorities and arguments on which respondent will rely. Any arguments or authorities not included in the brief will be refused consideration by the Board of Patent Appeals and Interferences, unless good cause is shown. The respondent brief shall be limited to issues raised in the appellant brief to which the respondent brief is directed. A third party respondent brief may not address any brief of any other third party.
(b) The respondent brief shall contain the following items under appropriate headings and in the order here indicated, and may include an appendix containing only those portions of the record on which reliance has been made.
(1) Real Party in Interest. A statement identifying the real party in interest.
(2) Related Appeals and Interferences. A statement identifying by number and filing date all other appeals or interferences known to the respondent, the respondent's legal representative, or assignee (if any) which will directly affect or be directly affected by or have a bearing on the decision of the Board of Patent Appeals and Interferences in the pending appeal.
(3) Status of claims. A statement accepting or disputing appellant's statement of the status of claims. If appellant's statement of the status of claims is disputed, the errors in appellant's statement must be specified with particularity.
(4) Status of amendments. A statement accepting or disputing appellant's statement of the status of amendments. If appellant's statement of the status of amendments is disputed, the errors in appellant's statement must be specified with particularity.
(5) Summary of invention. A statement accepting or disputing appellant's summary of the invention or subject matter defined in the claims involved in the appeal. If appellant's summary of the invention or subject matter defined in the claims involved in the appeal is disputed, the errors in appellant's summary must be specified.
(6) Issues. A statement accepting or disputing appellant's statement of the issues presented for review. If appellant's statement of the issues presented for review is disputed, the errors in appellant's statement must be specified. A counter statement of the issues for review may be made. No new ground of rejection can be proposed by a third party requester respondent.
(7) Argument. A statement accepting or disputing the contentions of the appellant with each of the issues. If a contention of the appellant is disputed, the errors in appellant's argument must be specified, stating the basis therefor, with citations of the authorities, statutes, and parts of the record relied on. Each issue should be treated under a separate heading. An argument may be made with each of the issues stated in the counter statement of the issues, with each counter-stated issue being treated under a separate heading. The provisions of § 1.965 (c)(8)(iii) and (iv) of these regulations shall apply to any argument raised under 35 U.S.C. 102 or § 103.
(8) Certificate of Service. A certification that a copy of the respondent brief has been served in its entirety on all other parties to the reexamination proceeding. The names and addresses of the parties served must be indicated.
(c) If a respondent's brief is filed which does not comply with all the requirements of paragraphs (a) and (b) of this section, respondent will be notified of the reasons for non-compliance and provided with a non-extendable period of one month within which to file an amended brief. If the respondent does not file an amended brief during the one-month period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, the respondent brief will not be considered.
After an appellant brief has been properly filed, a party opposing the appellant may file a respondent brief in support of the claim determination(s) made in the Right of Appeal Notice (RAN) which are in favor of the opposing party. The respondent brief must, however, be limited to issues raised in the appellant brief to which the respondent brief is directed. 37 CFR 1.967(a).
The respondent brief must be accompanied by the requisite fee set forth in 37 CFR 1.17(c), and it must be filed within one month from the date of service of the appellant brief on the opposing party.
Pursuant to 37 CFR 1.963(b), the time for filing a respondent brief may not be extended. If a respondent brief is filed which does not comply with all the requirements of 37 CFR 1.967(a) and (b), respondent will be notified and given a nonextendable period of one month within which to file an amended brief to correct the defect(s). See 37 CFR 1.967(c). Failure to timely file a respondent brief and fee (or failure to timely complete the respondent brief, where it is noted by the examiner as being incomplete under 37 CFR 1.967(c)) will result in the respondent brief not being considered. Note that if the respondent brief is late, or if an amended respondent brief is not submitted after a requirement to correct the defect(s) (following a timely respondent brief), the respondent brief will be placed in the file and given a paper number; however, it will be marked as "not entered" since it is not formally received into the record, and it will not be considered. The same is true for an amended respondent brief which is late.
It should be noted that where a party fails to file a timely notice of appeal or notice of cross appeal, that party may no longer file an appellant brief to appeal a claim determination adverse to that party; however, that party is permitted to file a respondent brief in accordance with 37 CFR 1.963(b).
A fee as set forth in 37 CFR 1.17(c) is required when the respondent brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). The submission of 3 copies of the respondent brief is required under 37 CFR 1.967(a). The respondent brief should indicate the number of the Technology Center (TC) and Art Unit to which the reexamination is assigned and the reexamination control number. A statement of what in the appellant brief is accepted and what is disputed must be provided in the respondent brief. Respondent must set forth the authorities and arguments upon which he/she will rely to dispute the contentions of the appellant with respect to the issues.
The provisions of 37 CFR 1.967(a) and (b) should be carefully reviewed to ensure that a complete respondent brief is provided. Where the respondent brief is not complete as to the provisions of 37 CFR 1.967(a) and (b), respondent will be notified (in accordance with 37 CFR 1.967(c)) by the examiner that respondent is given a non-extendable period of one month to correct the defect(s) by filing an amended respondent brief. Where this procedure has not been followed, the Board of Patent Appeals and Interferences should remand the reexamination file to the examiner for appropriate action.
Go to MPEP - Table of Contents