1203.02(e) Material Submitted with Briefs
The record in the application should be complete prior to the filing of an appeal. [ Note 1.] See TBMP § 1207.01. It is not necessary to attach as exhibits to a brief evidence that is already in the application because the appeal brief is associated with the application. Such evidence should not, as a matter of course, be resubmitted as exhibits to the brief. [ Note 2.] See TBMP § 1203.01.
Exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be considered. [ Note 3.] See TBMP § 1207.01. However, if the examining attorney, in their brief, discusses the exhibits attached to the applicant’s brief without objecting to them, or if the applicant discusses, in its reply brief, exhibits attached to the examining attorney’s brief without objection, they may be deemed to have been stipulated into the record and may be considered. See TBMP § 1207.03.
Evidentiary references made in briefs but not supported by timely submissions may not be considered. [ Note 4.]
NOTES:
2. In re Information Builders Inc., 2020 USPQ2d 10444, at *2 n.4 (TTAB 2020) (attaching previously submitted evidence to an appeal brief is unnecessary and impedes efficient disposition of the appeal by the Board), appeal dismissed, No. 20-1979 (Oct. 20, 2020). Cf. Life Zone Inc. v. Middleman Group, Inc., 87 USPQ2d 1953, 1955 n.4 (TTAB 2008) (same in inter partes context),.
3. See In re tapio GmbH, 2020 USPQ2d 11387, at *3 (TTAB 2020) ("screen shots" from applicant’s website that were embedded in applicant’s brief and other materials that were first filed with applicant’s brief not considered); In re James S. Fallon, 2020 USPQ2d 11249, at *2 (TTAB 2020) (copy of applicant’s patent drawing first submitted as exhibit to applicant’s brief not considered); In re Minerva Associates, Inc., 125 USPQ2d 1634, 1636 n.9 (TTAB 2018) (applicant’s copy of specimen filed in its co-pending application attached to appeal brief not considered); In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016) (copy of patent excerpt submitted with appeal brief not considered); In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014) (examining attorney’s objection to applicant’s submission of registrations with appeal brief sustained); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013) (copies of documents pertaining to district court litigation submitted with applicant’s appeal brief not considered); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (exhibits attached to applicant’s supplemental brief not considered; noted that evidence could have been submitted during the period of further examination after remand); In re City of Houston, 101 USPQ2d 1534, 1536-37 (TTAB 2012) (copies of third-party registrations submitted for first time with reply brief are untimely and will not be considered, but list of such registrations submitted during examination will be considered for whatever limited probative value it has), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re District of Columbia, 101 USPQ2d 1588, 1591-92 (TTAB 2012) (third-party registrations submitted for first time with appeal brief are not considered), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011) (materials submitted with reply brief, after two requests for remand were denied, were not of record and, because reply brief discussed materials at length, reply brief also not considered); In re Brouwerij Bosteels, 96 USPQ2d 1414 (TTAB 2010) (exhibits attached to applicant’s supplemental reply brief not considered); In re HerbalScience Group LLC, 96 USPQ2d 1321, 1322 (TTAB 2010); In re Quantum Foods Inc., 94 USPQ2d 1375, 1377 n.2 (TTAB 2010) (page from applicant’s website submitted with appeal brief not considered); In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009) (third-party registrations and excerpt from registrant’s website submitted with supplemental appeal brief not considered); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009) (submissions with reply brief not considered); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 n.3 (TTAB 2008) (previously unsubmitted materials attached to applicant’s brief not considered); In re Tea and Sympathy Inc., 88 USPQ2d 1062, 1063 n.2 (TTAB 2008) (exhibits submitted for first time with applicant’s appeal brief and declaration attached to reply brief not considered); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 n.5 (TTAB 2007) (entry from online encyclopedia submitted for first time with reply brief untimely and not of record); In re Genitope Corp., 78 USPQ2d 1819 n.3 (TTAB 2006) (materials from applicant’s website submitted for first time with examining attorney’s brief not considered); In re King Koil Licensing Co., 79 USPQ2d 1048, 1050 (TTAB 2006) (declaration by applicant’s president submitted for first time with applicant’s appeal brief not considered); In re Promo Ink, 78 USPQ 1301, 1303-04 (TTAB 2006); In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Couture, 60 USPQ2d 1317, 1319 n.3 (TTAB 1999); In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001) ("By attempting to introduce evidence with its reply brief, applicant has effectively shielded this material from review and response by the Examining Attorney"; material submitted with reply brief not considered); In re Styleclick.com Inc., 57 USPQ2d 1445, 1446 n.2 (TTAB 2000) (although applicant had properly submitted copies of third-party registrations, additional registrations listed in applicant’s brief, which were not commented on by examining attorney in her brief, not considered); In re Polo International Inc., 51 USPQ2d 1061,1062 n.2 (TTAB 1999) (typed list of third-party registrations submitted with applicant’s brief which were objected to by examining attorney, not considered); In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703 n.2 (TTAB 1998) (third-party registrations submitted with reply brief not considered); In re North American Free Trade Association, 43 USPQ2d 1282, 1287 n.9 (TTAB 1997) (letter submitted with applicant’s brief was not made of record during prosecution, and therefore not considered); In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997) (copy of unpublished case submitted with applicant’s reply brief not considered).
Cf. In re Osterberg, 83 USPQ2d 1220, 1221 n.2 (TTAB 2007) ("clean" version, with nonmaterial edits, of declaration submitted during examination that was attached as exhibit to appeal brief considered because the two versions of the declaration substantially the same); In re Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921, 1922 n.1 (TTAB 2004) (although applicant submitted new evidence with its brief, subsequently examining attorney was granted remand of application, and therefore examining attorney had opportunity to consider this evidence and respond thereto; exhibit was considered of record).
4. See In re Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012) (applicant withdrew references in brief to third-party registrations it inadvertently failed to attach to responses during examination; applicant’s footnote reference to a journal not considered because it was being offered for its evidentiary value on evidence not properly introduced).