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May 6, 2008

An Inconvenient Truth

The New York Times gives pesky perfectionist professor John F. Duffy his 15 minutes of fame. Duffy had the temerity to finger the criminal gang commonly known as Congress for passing a law in 1999 letting the USPTO director appoint appeal board judges. Only one thing wrong with that: it's unconstitutional.

The New York Times:

His basic point does not appear to be in dispute. Since 2000, patent judges have been appointed by a government official without the constitutional power to do so. 46 of the 74 judges on the patent court, the Board of Patent Appeals and Interferences, were appointed under the new law.

The Justice Department has already all but conceded that Professor Duffy is right. Given the opportunity to dispute him in a December appeals court filing, government lawyers said only that they were at work on a legislative solution.

They did warn that the impact of Professor Duffy's discovery could be cataclysmic for the patent world, casting "a cloud over many thousands of board decisions" and "unsettling the expectations of patent holders and licensees across the nation." But they did not say Professor Duffy was wrong.

The problem Professor Duffy identified at least arguably invalidates every decision of the patent court decided by a three-judge panel that included at least one judge appointed after March 2000.

The Office of Legal Counsel at the Justice Department, which is supposed to catch constitutional problems in pending legislation, only last year published a 41-page memorandum on the importance and limits of the appointments clause. People who wield the delegated sovereign powers of the federal government are officers subject to the appointments clause, the memorandum said, and judges certainly wield such power.

Some provisions of the Constitution are open to interpretation, but some are clear. The Constitution says, for instance, that some government officials may be appointed only by the president, the courts or "heads of departments" like the attorney general or the secretary of commerce.

The appeals court, the United States Court of Appeals for the Federal Circuit, ducked the question in January, which was easy to do because the company on the losing side raised it only after the court had already issued its decision. The company, Translogic Technology, was frank in explaining the delay: it had not known of the issue until Professor Duffy published his article.

Last month, Translogic asked the Supreme Court to consider the question. The Supreme Court will soon decide whether to take up the question.

The Supreme Court would just as soon side-step this little mess, and may, letting the issue die of judicial neglect.

The solution, previously in the Patent Prospector: have the President or Secretary of Commerce reappoint the same judges.

Posted by Patent Hawk at May 6, 2008 12:58 PM | The Patent Office


However, I don't know whether an appointment now would cure the constitutional defects in the earlier appointments.

Posted by: mmm at May 7, 2008 8:42 AM

i concur

Posted by: dougcoverdale at May 9, 2008 10:44 AM