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President Bush Signs into Law Bill on Appointment of Admin Trademark and Patent Judges, But Constitutional Questions Still Linger
To amend Title 35, United States Code, and the Trademark Act of 1946
H.R.6362, S.3295, 08/12/2008
Basic Information
U.S. President George Bush signed into law on August 12, 2008 a bill that transfers back the power to appoint administrative trademark and patent judges from the U.S. Patent and Trademark Office to the Secretary of Commerce, but constitutional questions still linger.
Previously, under the Intellectual Property and Communications Reform Act of 1999 (IPCRA"), the power to appoint was transferred from the Secretary of Commerce to the USPTO Director. The new law will now vest such power back to the Commerce Secretary after the constitutionality of such grant of power to the USPTO was challenged before the U.S. Supreme Court in the case Translogic Technology v. Dudas, No. 07-1303. This case remains pending.
The constitutional problem with that shift in power under IPCRA was first noted in a scholarly article by intellectual property scholar John Duffy of George Washington University School of Law. BPAI judges exercise “significant authority,” argued Duffy, and qualify as “inferior officers” under the appointments clause. The clause requires that inferior officers be appointed either by the president, acting alone or with the Senate’s advice and consent; by courts of law; or by heads of departments.The PTO director is not a head of a department. His article can be found at http://www.patentlyo.com/lawjournal/files/Duffy.BPAI.pdf.
In his article, Duffy wrote that under 35 U.S.C. § 6, administrative patent judges of the Board of Patent Appeals and Interferences (BPAI) were appointed by the Director of the USPTO. “That method of appointment is almost certainly unconstitutional, and the administrative patent judges serving under such appointments are likely to be viewed by the courts as having no constitutionally valid governmental authority. The Appointments Clause of the U.S. Constitution (Art. II, § 2, cl. 2) provides: ‘[The President] by and with the Advice and Consent of the Senate, shall appoint ... all other Officers of the United States, whose Appointments are not herein otherwise provided for, and which shall be established by Law: but the Congress may by Law vest the Appointment of such inferior Officers, as they think proper, in the President alone, in the Courts of Law, or in the Heads of Departments.’” Id., p.1.
According to Duffy, the Supreme Court has interpreted this provision as a rather strict limitation on the constitutionally permissible methods of appointment. Under the Supreme Court’s precedent, any government appointee “exercising significant authority pursuant to the laws of the United States is an ‘Officer of the United States’ and must, therefore, be appointed in the manner prescribed by [the Appointments Clause].” Id., citing Buckley v. Valeo, 424 U.S. 1, 126 (1976).
In this regard, Duffy pointed out that “(i)f, as seems clear, the current appointment process for administrative patent judges is unconstitutional, the next obvious question is whether the unconstitutional appointment process will lead to the invalidation of a significant number of BPAI decisions. In other words, the question is whether, as a practical matter, the problem is a serious one for the agency. The short answer is that it is serious, though precisely how serious is hard to determine.” Id., p. 24.
The new law however does not totally clip the power of the Director of the USPTO because such appointments will have to be made upon prior consultation with the Director.
View a PDF of the statute.Service
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