Professor John Duffy was on NPR this week, on the Kojo Namdi show on our
local affiliate, WAMU in DC. Some of you mau know that he published a
paper saying that every judge appointed to the Board since 2000 was
improperly appointed because they were appointed by the director of the
USPTO and not by the Secretary of Commerce.
I asked him on air what we should tell our clients about the status of
patents we obtained through appeals to the Board. He only said that he
couldn't give a legal opinion on air, which, given that I don't believe I
was asking for an opinion, amounts to little more than 'I don't know'!
For example, he could have said that it depended on litigation, which
would hardly have been a legal opinion.
He did say on the show that he thought the USPTO would try to argue that
the Administrative Patent Judges were not officers of the agency,
although it's hard to see how that could be argued.
Duffy said that the appointments clause of the US constitution requires
officers of an agency to be appointed by the head of a department (or by
the president, or in one other way that I forget) and the director of the
PTO is only undersecretary in the Commerce dept., but the 1999 act
requires the APJs who sit on the Board to be appointed by the director.
He said that there is case law (but I don't think he gave us a cite)
saying that an officer is someone who makes final decisions of an agency.
A final rejection is not final in this sense, because it can be appealed
to the Board, but a decision of the Board is, because it can only be
appealed to district court or to the federal circuit (although the
district court hears it as a court of first instance).
Alun Palmer, US Patent Agent
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