New Legislation Aims to Cure Possible Defect in Appointment of Some TTAB Judges

The Patently O patent law blog reports here that the U.S. House and Senate have passed "A bill to amend title 35, United States Code, and the Trademark Act of 1946 to provide that the Secretary of Commerce, in consultation with the Director of the United States Patent and Trademark Office, shall appoint administrative patent judges and administrative trademark judges, and for other purposes." [Library of Congress information here].


This legislation is, of course, intended to solve a problem pointed out by Professor John Duffy regarding the appointment of judges at the Board of Patent Appeals and Interferences ("BPAI"). The Constitution requires that "inferior officers" be appointed by no one lower than "Heads of Departments." According to Duffy, administrative patent judges qualify as "inferior officers," but a number of BPAI judges may have been appointed after 2000 by the Director of the USPTO, who arguably is not the "head" of a department.

In a posting last May on this blog (here), I opined that the appointments of as many as half of the current TTAB judges may suffer from the same flaw.

The new bill provides that henceforth BPAI and TTAB judges will be appointed by the Secretary of Commerce in consultation with the PTO Director. It further provides that the Secretary of Commerce may deem the appointment of a BPAI or TTAB judge who, "before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the ... judge."

Finally the bill provides a "Defense to Challenge of Appointment" as follows: "It shall be a defense to a challenge to the appointment of an administrative [patent or trademark] judge on the basis of the judge's having been originally appointed by the Director that the [patent or trademark] judge so appointed was acting as a de facto officer."

Presumably, President Bush will sign the bill into law.

TTABlog comment: It remains to be seen whether this legislation will solve the problem vis-a-vis decisions that were rendered by panels that included improperly appointed judges. If the judges were unconstitutionally-appointed, are the decisions they rendered therefore null and void? Can a judge be retroactively appointed by the Secretary of Commerce to cure the defect? I suspect we will find out one of these days.

Text Copyright John L. Welch 2008.