About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristant #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Enter your email address:

Delivered by FeedBurner

Contact the Docs

Docs on Twitter


Disclaimer

  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat_165
Juristat #8 Overall Rank

Pharma-50-transparent_216px_red

« Conference & CLE Calendar | Main | U.S. Application Backlog Falls to Five-Year Low »

October 23, 2011

Comments

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.

March 2019

Sun Mon Tue Wed Thu Fri Sat
          1 2
3 4 5 6 7 8 9
10 11 12 13 14 15 16
17 18 19 20 21 22 23
24 25 26 27 28 29 30
31