2675.01 Respondent Brief [R-07.2015]
37 CFR 41.66 Time for filing briefs.
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- (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 or an amended respondent’s brief may not be extended.
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37 CFR 41.68 Respondent’s brief.
- (a)
- (1) Respondent(s) in an appeal may once, within the time limit for filing set forth in § 41.66, file a respondent brief and serve the brief on all parties in accordance with § 1.903 of this title.
- (2) 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 § 41.20(b)(2).
- (3) The respondent brief shall be limited to issues raised in the appellant brief to which the respondent brief is directed.
- (4) A requester’s respondent brief may not address any brief of any other requester.
- (b)
- (1) 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.
- (i) Real Party in Interest. A statement identifying by name the real party in interest.
- (ii) Related Appeals, Interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences or judicial proceedings known to respondent, the respondent’s legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph must be included in an appendix as required by paragraph (b)(1)(ix) of this section.
- (iii) 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.
- (iv) 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.
- (v) Summary of claimed subject matter. A statement accepting or disputing appellant’s summary of the subject matter defined in each of the independent claims involved in the appeal. If appellant’s summary of the subject matter is disputed, the errors in appellant’s summary must be specified.
- (vi) Issues to be reviewed on appeal. 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 requester respondent.
- (vii) Argument. A statement accepting or disputing the contentions of appellant with each of the issues presented by the appellant for review. 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 statutes, regulations, authorities, and parts of the record relied on. Each issue must 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.
- (viii) Evidence appendix. An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by respondent in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the respondent’s brief. See § 41.63 for treatment of evidence submitted after appeal.
- (ix) Related proceedings appendix. An appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (b)(1)(ii) of this section.
- (x) 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.
- (2) A respondent brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal.
- (1) 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.
- (c) If a respondent brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (b) of this section, respondent will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If respondent does not file an amended respondent brief within the set time period, or files an amended respondent brief which does not overcome all the reasons for non-compliance stated in the notification, the respondent brief and any amended respondent brief by that respondent 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. If an appellant brief was not properly filed and a notice of non-compliance is mailed to the appellant, the party opposing the appellant may file a respondent brief within one month from the date of service of the amended appellant’s brief filed in response to the non-compliance notice. The respondent brief must, however, be limited to issues raised in the appellant brief to which the respondent brief is directed or to the examiner’s position. 37 CFR 41.68(a)(3). The respondent’s brief may include any arguments previously made of record that support the examiner’s findings with respect to any claim addressed in the opposing party’s appellant brief. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 109 USPQ2d 1599, 1603 (Fed. Cir. 2014) (“Tempo has the right to defend the examiner’s final decision on any ground supported by the record,” citing Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1356, 105 USPQ2d 1727 (Fed. Cir. 2013)).
The respondent brief must be accompanied by the requisite fee set forth in 37 CFR 41.20(b)(2), 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 41.66(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 41.68(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 41.68(c). Failure to timely file a respondent brief and fee (or failure to timely complete the respondent brief, where it is noted as being incomplete under 37 CFR 41.68(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; 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 41.66(b).
A fee as set forth in 37 CFR 41.20(b)(2) is required when the respondent brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). The respondent brief should indicate the number of the Central Reexamination Unit (CRU) 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 41.68(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 41.68(a) and (b), respondent will be notified (in accordance with 37 CFR 41.68(c)) and will be given a non-extendable period of one month to correct the defect(s) by filing an amended respondent brief.