MPEP § 1206 — MPEP § 1206
Current through: 2022-07-01

1206-Amendments and Affidavits or Other Evidence Filed With or After Appeal 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1206 
 

 
 
 
 
 
 1206 Amendments and Affidavits or Other Evidence Filed With or After
 Appeal [R-01.2024]
 

 
 37 CFR 41.33 Amendments and affidavits or other evidence after appeal. 

 
 (a) Amendments filed after the date of filing an appeal
 pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is
 filed pursuant to § 41.37 may be admitted as
 provided in § 1.116 of this title.
 

 (b) Amendments filed on or after the date of filing a brief
 pursuant to § 41.37 may be admitted:
 
 (1) To cancel claims, where such cancellation does not
 affect the scope of any other pending claim in the proceeding, or
 

 (2) To rewrite dependent claims into independent
 form.
 

 
 

 (c) All other amendments filed after the date of filing an
 appeal pursuant to § 41.31(a)(1) through (a)(3) 
 will not be admitted except as permitted by §§ 41.39(b)(1) , 41.50(a)(2)(i) , and 41.50(b)(1) .
 

 (d)
 
 (1) An affidavit or other Evidence filed after the
 date of filing an appeal pursuant to § 41.31(a)(1) through
 (a)(3) and prior to the date of filing a brief
 pursuant to § 41.37 may be admitted if
 the examiner determines that the affidavit or other Evidence overcomes all
 rejections under appeal and that a showing of good and sufficient reasons
 why the affidavit or other Evidence is necessary and was not earlier
 presented has been made.
 

 (2) All other affidavits or other Evidence filed after
 the date of filing an appeal pursuant to § 41.31(a)(1) through
 (a)(3) will not be admitted except as permitted by §§
 41.39(b)(1) , 41.50(a)(2)(i) , and
 41.50(b)(1) .
 

 
 

 
 
 I. AMENDMENTS A new amendment must be submitted in a separate paper. Entry of a new
 amendment in an application on appeal is not a matter of right. The entry of an
 amendment (which may not include a new affidavit, declaration, exhibit or other
 evidence) submitted in an application on appeal is governed by 37 CFR 41.33 .
 

 Amendments filed after the filing of a notice of appeal, but prior to
 the date of filing a brief, may be admitted only to:
 

 
 (A) cancel claims;

 (B) comply with any requirement of form expressly set forth in a
 previous action;
 

 (C) present rejected claims in better form for consideration on
 appeal; or
 

 (D) amend the specification or claims upon a showing of good and
 sufficient reasons why the amendment is necessary and was not earlier presented.
 See 37 CFR
 41.33(a) .
 

 
 If the examiner denies the entry of such an amendment, the examiner
 should use form PTOL-303, “Advisory Action Before the Filing of an Appeal Brief,” to
 notify the applicant of the non-entry and the reason for non-entry. 
 

 Amendments filed on or after the date of filing a brief
 pursuant to 37 CFR
 41.37 and within the time period set forth in 37 CFR
 90.3 may be admitted only to:
 

 
 (A) cancel claims, where such cancellation does not affect the scope
 of any other pending claim in the proceeding; or 
 

 (B) rewrite dependent claims into independent form. 

 
 An amendment filed on the same date as a non-compliant
 appeal brief is considered an amendment filed pursuant to 37 CFR 41.33(b) 
 regardless of whether an amended appeal brief is filed after the date of the submitted
 amendment.
 

 The submission of an amendment after the filing of a
 non-compliant brief will be considered under 37 CFR 41.33(b) . For example,
 applicant files a notice of appeal and an appeal brief on July 14, 2022. Applicants
 files an amendment under 37 CFR 41.33(b) on August 19, 2022.
 In response to a notice of defective appeal brief, applicant timely files an amended
 brief on September 19, 2022. The filing of the amendment on August 19, 2022, will be
 considered under 37
 CFR 41.33(b) and not under 41.33(a) . If prosecution is
 reopened, then the filing of the non-complaint appeal brief on July 14, 2022, would not
 be used to determine whether the amendment was filed after the filing of the appeal
 brief.
 

 37 CFR
 41.37(c)(2) provides that a brief shall not include any
 non-admitted amendment. Thus, appellants may not include an amendment under
 37 CFR
 41.33(b) in the appeal brief. Should appellants wish to file an
 amendment at the same time as a brief, appellants must submit such an amendment in a
 paper separate from the appeal brief.
 

 Rewriting dependent claims into independent form as permitted under
 37 CFR
 41.33(b)(2) includes the following situations: 
 

 
 (A) rewriting a dependent claim in independent form by adding thereto
 the limitations of the parent claim(s); and 
 

 (B) rewriting an independent claim to incorporate therein all the
 subject matter of a dependent claim, canceling the dependent claim and in
 conjunction therewith changing the dependency of claims which had depended from
 the dependent claim being canceled to the amended independent claim that
 incorporates therein all the subject matter of the now canceled dependent
 claim.
 

 
 Amendments filed after jurisdiction of the appeal is
 transferred to the Board are not considered prior to the expiration of the time period
 set forth in 37 CFR 90.3 unless the case is remanded by the Board for
 consideration of the amendment. If an amendment is considered non-compliant the
 applicant may not be granted additional time to submit a substitute amendment. As such,
 it is recommended that appellant rewrite dependent claims, which have been objected to
 as being allowable except for their dependency on a rejected independent claim, before
 the appeal is forwarded to the Board. Such amendments must be filed before the
 expiration of the time period set forth in 37 CFR 90.3 , to avoid cancellation
 of the objected to claims. This includes dependent claims in which the rejections are
 withdrawn by the examiner in the Examiner’s Answer. See MPEP §§ 1214.06 and
 1214.07 .
 

 If the examiner denies entry of an amendment filed on or after the date
 of filing a brief, the examiner should use form PTOL-304, “Advisory Action After the
 Filing of an Appeal Brief,” to notify the applicant of the non-entry and the reason for
 non-entry. 
 

 Examiners must respond to all amendments filed after an appeal has been
 taken and prior to transfer of jurisdiction to the Board under 37 CFR 41.35(a) .
 If the examiner indicates (in the advisory action) that an amendment would be entered,
 it is imperative for the examiner to also state (in the same advisory action) how the
 individual rejection(s) set forth in the final Office action will be impacted by the
 entry of the amendment except where an amendment merely cancels claims or rewrites
 dependent claims in independent form. If the examiner determines that an amendment
 clearly places the application in condition for allowance, the examiner may enter the
 amendment and allow the application. Except for amendments that meet the conditions set
 forth above, all other amendments submitted after the date of filing a notice of appeal
 will not be entered except as permitted by 37 CFR 41.39(b)(1) ,
 41.50(a)(2)(i) and 41.50(b)(1) .
 

 See MPEP
 §§ 714.02 , 714.12 and 714.13 for the
 treatment of amendments, affidavits and other evidence submitted after the mailing of a
 final rejection or a non-final rejection, but prior to the filing of a notice of appeal
 under 37
 CFR 41.31(a) . Any amendment, affidavit or other evidence filed
 after the mailing date of a final Office action and on or before the date of the notice
 of appeal will be treated by the Office as being filed prior to the notice of appeal and
 treated under 37 CFR
 1.116 . Any amendment, affidavit or other evidence filed after the
 mailing date of a non-final Office action and on or before the date of notice of appeal
 will be treated by the Office as being filed prior to the notice of appeal and treated
 under 37 CFR
 1.111 .
 

 An amendment, affidavit or other evidence received after
 jurisdiction has passed to the Board should not be considered by the examiner unless
 remanded for that purpose. See MPEP §§ 1210 and 1211.02 .
 

 II. AFFIDAVITS OR OTHER EVIDENCE Affidavits or other evidence (e.g., declarations or exhibits) submitted
 after the date of filing a notice of appeal, but prior to the date of filing a brief
 pursuant to 37 CFR
 41.37 , may be admitted if the examiner determines that:
 

 
 (A) the affidavits or other evidence overcomes all rejections under
 appeal; and 
 

 (B) a showing of good and sufficient reasons why the affidavit or
 other evidence is necessary and was not earlier presented has been made. 
 

 
 If the examiner denies the entry of such an affidavit or other
 evidence, the examiner should use form PTOL-303, “Advisory Action Before the Filing of
 an Appeal Brief,” to notify the applicant of the non-entry and the reason for
 non-entry.
 

 If the examiner determines that an affidavit or other evidence clearly
 places the application in condition for allowance, the examiner may enter the affidavit
 or other evidence and allow the application. Except as noted above, all other affidavits
 or other evidence filed after the date of filing a notice of appeal pursuant to
 37 CFR
 41.31(a)(1) - (a)(3) will not be admitted except
 as permitted by 37
 CFR 41.39(b)(1) , 41.50(a)(2)(i) and 41.50(b)(1) .
 

 An amendment, affidavit or other evidence received after jurisdiction
 has passed to the Board should not be considered by the examiner unless remanded or
 returned by the Board for such purpose. See MPEP §§ 1210 and 1211.02 .
 

 Information Disclosure Statements submitted after the date
 of a notice of appeal are normally held in abeyance pending a decision on the appeal.
 Consideration of Information Disclosure Statements is based on MPEP § 609 and
 37 CFR
 1.97 and 1.98 and not on 37 CFR 41.33 .
 

 

 

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 1201-Introduction 

 1202-Composition of Board 

 1203-Administrative Handling 

 1204-Notice of Appeal 
 1204.01-Reinstatement of Appeal 

 1204.02-Pre-Appeal Brief Review Request and Conference Pilot Program 

 1204.03-Interviews After Notice of Appeal 

 1204.04-Official Record on Appeal 

 
 

 1205-Appeal Brief 
 1205.01-Time for Filing Appeal Brief 

 1205.02-Appeal Brief Content 

 1205.03-Non-Compliant Appeal Brief and Amended Brief 

 
 

 1206-Amendments and Affidavits or Other Evidence Filed With or After Appeal 

 1207-Examiner’s Answer 
 1207.01-Appeal Conference 

 1207.02-Contents of Examiner’s Answer 

 1207.03-New Ground of Rejection in Examiner’s Answer 
 1207.03(a)-Determining Whether a Ground of Rejection is New 

 1207.03(b)-Petition to Designate a New Ground of Rejection and to Reopen Prosecution 

 1207.03(c)-Appellant's Reply to New Grounds of Rejection 

 
 

 1207.04-Reopening of Prosecution After Appeal 

 1207.05-Substitute Examiner’s Answer 

 
 

 1208-Reply Briefs and Fee for Forwarding Appeal 
 1208.01-Fee for Forwarding an Appeal to the Board 

 
 

 1209-Oral Hearing 

 1210-Actions Subsequent to Examiner’s Answer but Before Board’s Decision 

 1211-Remand by Director or Board 
 1211.01-Remand by Board for Further Consideration of Rejection 

 1211.02-Remand To Consider Amendment 

 1211.03-Remand To Consider Affidavits or Declarations 

 1211.04-Remand by Board for Further Search 

 
 

 1212-Board Requires Appellant to Address Matter 

 1213-Decision by Board 
 1213.01-[Reserved] 

 1213.02-New Grounds of Rejection by Board 

 1213.03-Publication of and Public Access to Board Decision 

 
 

 1214-Procedure Following Decision by Board 
 1214.01-Procedure Following New Ground of Rejection by Board 

 1214.02-[Reserved] 

 1214.03-Rehearing 

 1214.04-Examiner Reversed in Whole 

 1214.05-Cancellation of Claims Not Appealed 

 1214.06-Examiner Sustained in Whole or in Part; Claims Require Action 

 1214.07-Reopening of Prosecution 

 
 

 1215-Withdrawal or Dismissal of Appeal 
 1215.01-Withdrawal of Appeal 

 1215.02-Claims Standing Allowed 

 1215.03-Partial Withdrawal 

 1215.04-Dismissal of Appeal 

 
 

 1216-Judicial Review 
 1216.01-Appeals to the U.S. Court of Appeals for the Federal Circuit 

 1216.02-Civil Suits Under 35 U.S.C. 145 and 146 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:33