T.M.E.P. § 1501.02
Examining Attorney's Appeal Brief
Executive summary:
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1501.02 Examining Attorney's Appeal Brief
After the appellant's brief has been filed, the Board will send a notice to the examining attorney. The examining attorney has sixty days from the date of the Board's notice to file a responsive brief with the Board and send a copy to the appellant. 37 C.F.R. 2.142(b). See TBMP §1203.02(b).
The examining attorney's appeal brief should be concise and contain a complete statement of reasons for the refusal or requirement and supporting facts.
Examining attorneys should use the format shown in Appendix A as a model when preparing an appeal brief. The purpose of this format is to promote consistency and to provide content guidelines. The substance of the appeal brief is a matter of individual discretion.
If the applicant submits new evidence with its brief, the examining attorney should object, because the record must be complete prior to appeal. 37 C.F.R. 2.142(d); TMEP §710.01(c). The examining attorney should raise objections to evidence as soon as possible, and continue the objection in his or her brief, or the Board may consider the objection to be waived. TBMP §1207.03. See In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n. 3 (TTAB 2001).
If, during the preparation of the appeal brief, the examining attorney determines that jurisdiction should be restored for further examination (e.g., to make a new refusal, to correct informalities, or to suspend), the examining attorney should submit a request for remand instead of an appeal brief. See TMEP §1504.05(a). If the Board grants the examining attorney's request, the Board will stay further proceedings in connection with the appeal. If the Board denies the request, it will reset the time for submission of the examining attorney's appeal brief.
Either the applicant or the examining attorney can request a remand. A request for remand to introduce additional evidence must include a showing of good cause (which may take the form of a satisfactory explanation as to why the evidence was not filed prior to appeal), and be accompanied by the additional evidence sought to be introduced. See TBMP §1207.02. Absent a request for remand to introduce additional evidence with a showing of good cause, no evidence should be submitted to the Board following a notice of appeal. See TBMP §1207.01.
1501.02(a) Reply Briefs in Ex Parte Appeals
The applicant may file a brief in reply to the examining attorney's appeal brief. Reply briefs must be filed within twenty days from the date of mailing of the examining attorney's brief. 37 C.F.R. 2.142(b)(1). It is not appropriate for the examining attorney to file a written response to the reply brief. However, in the oral argument (if the applicant requests an oral argument), the examining attorney should respond to any significant issues raised in the applicant's reply brief.