USPTO Oral Communications Not Binding, Even with Post-Abandonment Affirmation

Thanks to Professor Hal Wegner for reminding us that an Examiner's oral promise does not bind the USPTO, even where there is an post-abandonment Interview Summary Record documenting the earlier promise. As noted in his email distribution list, the decision in In re Milton, 2006 WL 4559500 (Com’r dec. 2006)(Pearson, Dir., Off. of Petitions) held:

“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. §1.2. With the introduction of this oral understanding into the record via the interview summary, nothing has changed. This information was not placed into the record until more than six months after Petitioner's reliance. 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.”

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