Renner Otto’s Dr. Jon Platt shares his poetic take on 37 CFR 1.2 – “The action of the Patent and Trademark Office will be based exclusively on the written records in the office”.

Some of my best work with the USPTO is done over the telephone. But those conversations, as far as the Office is concerned, are nothing more than words as fleeting and worthless as the wind. Or in the less poetic language of 37 CFR 1.2, “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.“ History is littered with the corpses (or at least evidence of the difficulties) of patent applicants who relied to their detriment upon words spoken by examiners or other USPTO personnel.

The wages of reliance on the spoken words of USPTO personnel are generally abandonment of the application, though many are the speakers who have induced such reliance, and many are the assurances or promises that they (allegedly) have made.

Some were examiners, while some held other positions in the Office. Applicants were told that a notice of missing parts was issued in error, and that no reply (presumably) was required [1]; that a filed preliminary amendment in response to a notice of missing parts was sufficient [2]; by “an unknown person in the Office” that they should submit a response to a notice of missing parts to a specific (unauthorized) facsimile number [3] ; (incorrectly) how they could respond to notice of incomplete reply to a notice of insufficient fees for filing a provisional application [4]; by an examiner that an issued Office action need not be responded to [5]; by an examiner that a Notice of Allowance was forthcoming, even though there was an outstanding Office action [6]; and by an examiner that no amended drawings were required even though a box on the notice of allowance was checked, allegedly in error, indicating that corrected drawings were required [7]. In all these cases the cases the applicant was considered by the Office to be abandoned, regardless of what the applicant may have been told.

Fortunately, applications abandoned usually can be revived and brought back to life under 37 CFR 1.137 (revival of unintentionally abandoned applications), albeit only if action is taken promptly, and with much delay and at a significant cost in government fees ($2,100 for a large entity as of this writing), and in time and effort. But better that

they don’t go abandoned in the first place. Better to make the written record, to follow all the rules and requirements, for example filing in writing at least pro forma responses to any paper issued by the USPTO requiring a reply, and to make up follow up calls as necessary until that written record is made. For what is inscribed in the written record of the Office is there for the time to come, as a witness forever.

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[1] In re Bolarinwa, Application 11/551,721, December 12, 2008.

[2] In re Rawls-Meehan, Application 11/876,686, March 16, 2009.

[3] In re Houde-Walter, Application 11/207,418, September 26, 2006.

[4] In re Givon, Application 61/136,870, June 13, 2009.

[5] In re Welch, Application 09/852,996, July 23, 2003, and In re Fujimoto, Application 10/938,089, February 6, 2008.

[6] In re Kasak, Application 11/035,185, November 16, 2007.

[7]In re Nakajima, Application 11/584,785, March 5, 2009, In re Yada, Application 11/359,388, February 9, 2009