Examiner’s Oral Promise Does Not Bind PTO

ScreenShot051In re Milton (Patent Petition 2007, App. No. 09/938,465)

During a telephone conversation, the Patent Examiner stated that a replacement office action would be forthcoming. Relying on that statement, the applicant did not respond to the already pending office action. Unfortunately, the Examiner did not issue the new office action and the case went abandoned.

37 C.F.R. 1.2 makes clear that an applicant should not rely on any oral promise from a patent Examiner. Applying this rule, the director of petitions rejected Milton’s petition for revival.

The oral promise could have immediately been memorialized in an interview summary — something that was not done in this case until after the abandonment.

At the time of Petitioner’s reliance, the understanding was a mere oral promise. This section of the C.F.R. expressly prohibits Petitioner’s reliance on the oral understanding, and withdrawal of the holding of the abandonment based on an action which is in contravention to a regulation would be improper.

Petition denied.


  • Thanks to Hal Wegner for providing information on this case.
  • The real party here is HP.

29 thoughts on “Examiner’s Oral Promise Does Not Bind PTO

  1. 29

    If I had a dollar for every promise an examiner ever made to me on the phone, I would be able to work pro bono for life.

    Also, note that PAIR is also non-binding! Also, you will notice that recordation dates entered in PAIR are often inaccurate, although you can glean the correct date from the stamp on the original document.

  2. 27

    The key is to document everything. Last fall I had a case that the examiner told me had been allowed. I checked PAIR and it showed that an allowance had been entered. I check back a month later after not receiving the Notice of Allowance – after the six month deadline – and found that the notice of allowance had been removed from PAIR. Fortunately, I had printed out the original page from PAIR. The case ultimately issued, but I could have been left hanging high and dry if I had not printed out the page from PAIR with the original allowance indicated. Never rely on the examiner’s oral statements or even what’s posted in PAIR.

  3. 26

    Lawyers are charged with preserving the rights of their clients. Lawyers perform a disservice to their clients by not preserving their rights and by not making matters/dealings or transactions of record, hence making them part of the intrinsic evidence of the record. All the parade of horribles speculation posted here is glossing over the fact that applicants can and should make the summary of an interview of record (in some proceedings its required by rule or the case goes abandoned!!, e.g. reexamination).

    See MPEP 713.04 which I quote:

    “The action of the U.S. Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself incomplete through the failure to record the substance of interviews.

    It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, except where the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form (PTOL-413B) that the examiner will provide a written summary. It is the examiner’s responsibility to see that such a record is made and to correct material inaccuracies which bear directly on the question of patentability.”

    All those bemoaning the fact that there is no “doubt” here need to brush up on their Admin & Evid law and take a look at the APA. Its called substantial evidence on the record as a whole. All the attorney had to do was in some way shape or form make the examiner’s oral promise part of the intrinsic evidence and then s/he could have relied upon it as part of their basis for revival. Better yet file the NOA to preserve applicant’s rights, and not even go down the petition to revive route, DUH! Oh how I long for the days before IP law became so “white hot” and become infiltrated with the ignorant GP “just whine and complain and you’ll get what you want” attitude that is solely motivated by blind greed and laziness. Your charged with knowing the rules people and then acting accordingly in the best interests of your client.

  4. 24

    I have to agree that this is ridiculous. The examiner could have fixed this in a bunch of different ways.

    Even if the case is the most anticipated invention in the world, if the examiner promised another action, the examiner should have delivered. Even if the case was technically abandoned, the examiner could have noted the agreement with the attorney and mailed out an action.

    The only way this could possible make sense is if the attorney didn’t actually call the examiner until after the case was abandoned and then tried to get this agreement. Even then, even a newbie examiner should know better than to agree to a new action unless they were going to write one.

    I hope the attorneys realize that many examiners will keep their promises.

  5. 23

    BTW, I would have filed a NOA if time ran out (after badgering the examiner and his supervisor about it until the last day of the period for reply – this usuall results in a faxed interview summary, which is good enough for me if it indicates no reply from applicant is necessary).

  6. 22

    You can argue about this till the cows come home, but if that attorney did not file a “Response” summarizing what was agreed to, I have little sympathy. After all, you MUST file some kind of response to an interview unless indicated otherwise by the examiner.

    Granted, the examiner was an a-h@le of the highest degree for not keeping his word (I was one for a long time, so I can say this!), but everyone should know these people don’t give a damn about anything but their step increases and bonuses (soon to be a thing of the past – ha ha ha).

  7. 21

    step back,

    I love your sites, particularly lemmings on the ledge, but on this one I’m going to have to respectfully disagree with you.

    Yes, the MPEP contains all kinds of wonderful chatter about picking up the phone and working it out, but the MPEP is not the law, and in my 9 years as an examiner and my 8 as a practitioner, I can’t count on one hand the number of examiners I’ve dealt with that actually follow the MPEP. When I actually cite a section to one of the hordes of newbie examiners, the response I get most often is: M, P, what?

  8. 20

    typical kafkest pto – examiners state they dont determine issues of law – that petitions branch job – petitions branch finds any way to ignore the law and decide it on the ‘facts’ or contrived mistatement of the facts. petitions branchg will decide one thing one week and the same thing another way the next, now that a place where everyone can agree could use some ‘quality control.’

  9. 19

    Step back, and the rest,
    You all need to go look at PAIR, as well as read the PTO’s denial of the petition. The attorney was hosed no matter what. He didn’t state the date he had his “conversation with the Examiner,” though he was careful to state all the other dates (Office action, etc.). The only interview of record is November 10, 2005: 4 months AFTER the application went abandoned. The PTO had no choice but to maintain the abandonment, since there’s no substantial evidence of record that supports reinstatement, and that’s what an executive agency needs.

  10. 18

    Just a side note. Although the reminder to not rely on oral statements from an Examiner is unmistakable here, HP has an internal prosecution system which may have contributed to the problem. Specifically, the attorney who spoke with the Examiner may have been an outside attorney whereas HP keeps the docket. Although the attorney probably could have done better, this extra layer of communication probably didn’t help.

  11. 16

    step back wrote: “Imagine if all these conversations came to a halt because Examiners could no longer be trusted at their word.”

    A famous person (I think Ronald Reagan) used to say, “Trust, but verify.” Here, the applicant could have made a couple of phone calls at 5 months and 25 days to verify that the promised office action was coming. If no verification came, the applicant could have (as Gideon correctly noted) filed a notice of appeal.

    Most practitioners will run into an examiner that says one thing in an interview, but something else on the record. As in the past, prudent applicants will trust, but verify. This means leaving the docketing entry for the notice of appeal, just in case.

    Although I often agree with step back’s observations, I do not think there is any risk of a slippery slope that will lead to applicant-examiner conversations grinding to a halt.

  12. 15


    Trust me. I’ve seen tempests in my teapot.
    This is no tempest.
    This is a category 4 on the Potomac.

    We’re constantly talking about being “efficient” and expediting the prosecution of patent applications. The way that such efficiencies are routinely attained is by phone conversations between Examiners and practitioners. We make oral elections to restriction requirements over the phone. We agree to last minute Examiner amendments so as to swiftly move a case to allowance and issue. We conduct telephone interviews (or in person ones) so as to better understand the Examiner’s position and in hopes that the versa visa will also occur.

    Imagine if all these conversations came to a halt because Examiners could no longer be trusted at their word. What would happen to the pace at which cases are moved forward? What would happen to the backlog?

    This is not a tempest in a smoky room’s teapot.
    This is a big deal. This is about a government that suffers from moral turpitude. This is about truth and honesty.

  13. 13

    Amazing case, as the Attorney should have known better. Not the Examiner’s fault, this one – even if he made an oral promise.

  14. 12

    Ex Cynic may need to switch to decaf, but the point about the petitions office ‘finding’ grounds to deny relief is right on. As stated before, if no one swears that they were at fault and throws themself on their sword, and pays the $1500, then denial of the petition is the norm.
    It’s hard to understand why the petitions bureau is motivated to deny relief.

  15. 11

    This decision is emblematic of all that is wrong at the Office, in particular, the Petitions Office. As happens in most petitions decisions, the Office (whether TC Directors’ SPE’s or the Petitions Office) rewrites any law that it finds “inconvenient.”

    The final sentence of Rule 1.2 reads as follows:

    No attention will be paid to any alleged oral
    promise, stipulation, or understanding in relation
    to which there is _disagreement or doubt._

    Here, the Milton decision itself expressly concedes that there was _no disagreement or doubt_ – it was the EXAMINER’S INTERVIEW SUMMARY that confirmed the “oral promise or understanding.” Instead, as happens in most of the decisions rendered over Charles Pearson’s signature, the Office out and out misquotes the law – the Petitions Office persistently fails to accurately quote its sources:

    The decision on the original decision dismissed Petitioner’s
    request to withdraw the holding of abandonment, on the grounds
    that Petitioner’s reliance on an oral promise is expressly
    prohibited by 37 C.F.R. ยง1.2.

    No, Mssrs. Pearson and Shanoski, you incompetent idiots, oral promises are *not* prohibited. The rule only says that if there is any *doubt* about the content of the oral promise, the Office is not bound. You conceded there is no *doubt*, why is Rule 1.2 applicable? Why can’t you do anything accurately?

    Too bad there are no Rule 11 sanctions available against the Petitions Office.

    The reason the PTO does so much “rework” is because so little of its work is done competently and honestly the first time.

  16. 10

    This is a tempest in a tea pot. There has never been any estoppel against the PTO for oral communications between examiners and applicants/representatives and there never will be. What’s new?

    It does reinforce what everybody already knows: examiners will do and/or say anything to get rid of applicants/representatives. That’s why the burden has always been on applicants/representatives and always will be. And the burden is about to get even bigger. Nothing new here people, let’s move on.

  17. 9

    Would this apply if the examiner had committed the oral promise to Interview Summary contemporaneously? i.e. does the presence of an Interview Summary confirming a new office action will be issued make the promise binding?

  18. 8

    Dear step back,

    It is so sad; you are so right!
    Soo many things are going awry in all three branches of government —

    Mike Bloomberg seems to be our only hope to turn things around.

  19. 7

    We have become a nation of slithering sheep and this despicable decision by the PTO department of rubber stampings proves it.

    Can you imagine Honest Abe saying that a man’s word is not his bond?

    Can you imagine George Washington saying it is OK to tell a lie because you have this self-made policy (37 CFR 1.2) that can be twisted beyond its original intent to mean that examiners can defraud the trusting public?

    Where is the outrage?
    Where are the ‘bring it on’ patriots who once long ago stood up to a tyrannical King George I and who now have the testicular fortitude to stand up to a forked tongue patent agency being run under the rules of a new King George II? (New royal edict: the government, the crown, can lie as long as it doesn’t get caught doing it in writing.)

    What has happened here people?

    When did they replace the American Government with the forked-tongue invaders from the low down liars lair of snakes? Where is our American version of Conan the Barbarian, ready to strike off the head of the snake king and to cut short his seductive snake talk? A promise is a promise. A man’s word is his bond. The USPTO has become a snake pit.

  20. 6

    “This is a bad decision for the office because applicants will not want to trust what an examiner says over the phone.”

    Isn’t the point of 37 CFR 1.2 that applicants should not trust what Examiner’s say but only what they write? In fact, I think 1.2 may the most frequently cited section of 37 CFR during Examiner interviews.

  21. 5

    Gideon exactly. I was in a similar situation and as three months went to four months went to 5 months, I kept following up with the Examiner and was fully prepared to file a NOA if needed. The Examiner was cool about it and he had reasons each time I reached him, but I wasn’t going to let the 6 month deadline go by.

  22. 4

    I’m not singling out Examiners.

    If the Pope said, “I’ll issue another OA,” I’d STILL file a NOA at the 5.9 month mark.

    Why not? 500 bucks and you’re good for 2 months.

    If nothing in 2 months, file the RCE.

    But to just sit on the case and watch the 6 month date slide by with NOTHING in PAIR that indicates a new OA has been sent . . .

    [whisper]that’s malpractice[/whisper]

  23. 3

    Anonymous: If what the attorney said in his declaration is true, the examiner told him that it was his mistake and to go ahead and file the petition for withdrawal of abandonment.

    There are a number of irregularities with this application:

    A. Direct quote from the advisory that everyone acknowledges should never have been send: “The amended claims fails to disclose the applicant invention. The amendement to the claims does place the application in condition for allowance.” What does this even mean?

    B. The examiner allegedly stated in TWO telephone interviews between the Advisory and Notice of Abandonment that he would issue an office action. The examiner later entered this into the record. Everyone agrees this is the examiner’s fault. Clearly the left hand does not believe it’s responsible for the actions of the right hand.

    C. Notice of abandonment is issued with the following comment “A phone call was made to the Applicant On Thursday, December 15, 2005 regarding the potential abandonment.” No record of what was discussed and with whom?

    Still, even though most of the problems were caused by the examiner, Applicant had the burden to respond to the advisory and should have filed something. The examiner should have probably informed them of this though.

    This is a bad decision for the office because applicants will not want to trust what an examiner says over the phone. At one point, I had several attorney’s call me when I’d issued a few notices of allowance after final. The allowances were signed and counted but got held up in the bowels of the office for a few months. I got called because the deadline was approaching and assured the attorney that I had sent out an allowance. Everything went smoothly in these cases but how would this sceneario change as a result of this decision?

  24. 2

    Looks like HP got a taste of “patent fairness” right here.
    Not that they care that much about their own patents anyhow.

  25. 1

    Why didn’t the attorney just file a Petition to Revive Unintentionally Abandoned Application – pay the $1500 fee and get it over with?

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