Relying on 37 C.F.R. §1.2, which states that all business with the U.S. Patent and Trademark Office (USPTO) should be transacted in writing and that no attention will be paid to any alleged oral promise in relation to which there is disagreement or doubt, the director of petitions recently rejected a patent attorney’s petition for revival. In re Milton (Patent Petition 2007, U.S. Serial No. 09/938,465).
A prosecuting attorney received a final Office Action and filed a timely amendment. Subsequently, the examiner issued an Advisory Action, which the attorney felt was incorrect in its reasoning for not entering the amendments proposed in the response to the final Office Action. During a subsequent telephone conversation, the examiner stated that a replacement Office Action would be forthcoming. Relying on that statement, the attorney took no further action in the case and waited to receive the replacement Office Action. Instead, a Notice of Abandonment was received the following month. The attorney subsequently filed a Petition for Withdrawal of Holding Abandonment Filed under 37 C.F.R. §1.181, which was denied. Several months later an Interview Summary was added to the file. Based on the issuance of the Interview Summary, the attorney filed a renewed Petition for Withdrawal of Holding Abandonment.
In dismissing the renewed request to withdraw the abandonment, the director of petitions pointed out that the attorney’s reliance on an oral promise is expressly prohibited by 37 C.F.R. §1.2. According to the director, the introduction of the oral understanding into the record via the Interview Summary after the abandonment did not warrant a different outcome because, at the time of the attorney’s reliance, the understanding was a mere oral promise. The director concluded that, given Rule 1.2’s express prohibition of reliance on an oral understanding, withdrawal of the holding of the abandonment based on an action which is in contravention to this regulation would be improper.
Practice Note: 37 CFR §1.2 states no attention will be paid to "any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt." It can be argued that there was no "disagreement or doubt" as evidenced by the Interview Summary. Nevertheless, prosecuting attorneys are responsible for taking proactive measures to ensure that an application does not go abandoned.
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