Should Interviews with Patent Examiners be Recorded?

Dennis Crouch's usually helpful blog, Patently-O, today includes a guest post by Professor Bernard Chao of the Sturm College of Law at the University of Denver.  In his post, entitled "Making Examiner Interviews Transparent," Professor Chao advocates recording personal interviews between applicants, their legal representatives, and patent examiners.

Professor Chao suggests that recording examiner interviews would help courts to interpret claims, by clarifying the reasons for allowance of patent claims.  And maybe it would, if it were possible to introduce those recordings into evidence in court.

Let's think about how that would work.  I'm representing my client in a patent infringement case, and my opponent tries to introduce a recording of an Examiner interview into evidence, to assist the court in understanding the meaning of some claim terms.

There's this teeny problem with that idea:  we have this thing in the United States called the "Federal Rules of Evidence."  In particular, there's Rule 802, which forbids admitting hearsay evidence.

Remember, hearsay is defined as an out-of-court statement that is offered to prove the truth of the matter asserted.  A recording of an examiner interview is indisputably an out-of-court statement.  My opponent is planning to introduce those out-of-court statements precisely for the truth of the matter asserted.  I'm not going to let that happen without a fight.  My client deserves the opportunity to cross-examine the examiner about what she said in the interview, what she was thinking about the claims, and how she arrived at her conclusions that the claim was patentable.

No problem, right?  We'll just subpoena the examiner, and get her testimony live.  For the purposes of our hypothetical, let's pretend we're in the Eastern District of Virginia, right next door to the USPTO, and the Examiner is local, and not in Denver or Detroit.  

Here's the main problem with that plan: patent examiners are forbidden by the USPTO from testifying in court about their "quasi-judicial functions," i.e., what they were thinking when they were examining a patent application.

Under these circumstances, I doubt there are many judges who will agree to admit recordings of Examiner interviews into evidence.  

There are other problems with his proposal.  For example, what about exhibits at interviews?  An audio recording is not going to show those.  How is a court supposed to understand the substance of an interview without being able to see what the examiner was looking at?  OK, fine, we'll videotape the interviews.  And we'll require that any exhibits presented at interviews be preserved, presumably by the USPTO, because you're not going to trust the applicant to hold on to that stuff.   They can keep them in the formerly secret atomic bunker up in the mountains of West Virginia.