37 C.F.R. 1.2 confirms that business with the US Patent and Trademark Office is to be transacted in writing. Further, it specifies that the action of the Patent and Trademark Office will be based exclusively on the written record in the Office. Thus, when an Applicant has an interview with an Examiner, the Applicant is generally required to make the substance of an interview of record in the application file.

In this way, when the Patent Trial and Appeals Board reverses an Examiner's rejection, the PTAB issues a written opinion indicating the reasons therefore and then returns the file to the jurisdiction of the Examiner. Petition decisions, however, do not always follow such rigorous procedure. For example, in one recent case, the Office of Petitions issued a decision granting a petition against a restriction with little reasoning explaining why the petition was granted. Instead, only the following was provided:

"After consultation with the Examiner, the requested relief is granted. The restriction requirement ... is hereby withdrawn. The examiner will issue an Office Action to rejoin and treat all pending claims..."

However, no record of the discussion is present in the file, nor is the office likely to provide it if asked (citing the internal deliberations exception under FOIA).

One can only wonder what this discussion entailed. Why was such consultation necessary? On what authority was such consultation made? Did the Office of Petitions see if the Examiner had some new, better, argument to support the restriction? Did the Office of Petitions give the Examiner coaching on how to fix the restriction so that it could be re-issued on the next action?

Examiners may take advantage of this back door communication to further frustrate a fair examination. It would be more appropriate for the Office of Petitions to simply give its reasoning and its decision, without back door communications to which the Applicant is not privy. The Office of Petitions does not generally afford the Applicant the ability to explain or argue their case via "discussions."