The National Law Journal is reporting that the U.S. Patent and Trademark Office may have unconstitutional appointments of nearly two-thirds of its patent appeals judges and nearly half of the trademark appeals judges. This could call into question the validity of hundreds of decisions over the last eight years.

The flaw, brought to light by highly Prof. John Duffy of George Washington University Law School, was raised in a petition filed in the U.S. Supreme Court by a company whose patent was rejected by a three-judge Board of Patent Appeals and Interferences panel. That panel decision was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit, which set aside an $86.5 million infringement verdict won by the company. The petition contends that one of the three panel judges in its case was named to the board in violation of the Constitution’s appointments clause.

The petition relies on a Patently-O Patent Law Journal article Prof. Duffy wrote challenging the constitutionality of the current system. The dust-up was precipitated by Intellectual Property and Communications Reform Act of 1999, which transferred the power to appoint BPAI judges from the secretary of Commerce to the PTO director.

But, BPAI judges qualify as inferior officers under the appointments clause and the clause requires that inferior officers be appointed either by the president, the courts of law or heads of departments. The PTO director is not a head of a department.

Bummer.

Pending patent reform legislation, which appears stalled if not dead, would return the appointment power to the Commerce secretary not only for the BPAI but also for the Trademark Trial and Appeal Board.

The PTO had no comment.

See also:

CAFC Judge Linn Expresses Disappointment over Failures by the BPAI and Patent Bar

Challenge to BPAI Appointments Moves to Supreme Court

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