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October 23, 2011


I have been curious as to why the Office seems not bound by 37 CFR 1.2:

§ 1.2 Business to be transacted in writing.

All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

The Office has often kept ITS rationale for granting (or not granting) re-examination (now review) out of the written record.

Much like the clandestine "Quality Review" which affects the applicants' rights and should be made of record, but which is not, these government actions (and the underlying rationales) should be made to accord with the spirit of the rule. Since this is an administrative agency and any further proceedings after an Office decision should be pursued based on the written record, the Office not putting its own decision making into the written record is suspect.

Dear Skeptical:

I presume that regulations providing for a written "grounds for refusing PGR" would be sufficient to satisfy the regulation. What if the paper merely said "the Director finds that petitioner has not shown a reasonable likelihood that at least one claim in the challenged patent is likely to be unpatentable?" How much more would you like to see?

Thanks for the comment.

Dr. Noonan,

A paper that merely has a conclusion has no evidentiary weight.

I would like to see the reasoning and facts that support any such conclusion.

Is that too much to ask?

Dear Skeptical:

It shouldn't be, but the statutory proscription against appeal suggests it may be.

I suppose the alternative would be to ask the CAFC for a writ of mandamus demanding an explanation. But I'm not sure that would be successful under the circumstances.

Thanks for the comment.

The comments to this entry are closed.

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