Senate bill S3295, sponsored by Senator Patrick Leahy, would amend Section 6 of the US Patent Act and Section 17 of the Lanham Act to specify that the secretary of commerce, rather than the USPTO director, is responsible for appointing judges to both the Board of Patent Appeals and Interferences (BPAI) and the Trademark Trial and Appeal Board (TTAB).
The bill was unanimously passed by the Senate on July 23 and is now being considered on the floor of the House of Representatives.
The bill was proposed partly in response to a paper published last year by law professor John Duffy, which revealed that about two-thirds of the judges on the BPAI were illegally appointed. The director of the USPTO has been choosing BPAI judges since 2000, but Duffy's paper contends that a clause in the US constitution relating to the criteria for such appointments confirms that he or she is not qualified to do this.
Duffy told Managing IP in an interview last month that, although the paper was the shortest of several articles he published last year, when the mainstream press picked up on the story several months ago, the issue “snowballed” and “people began to take it seriously”.
The Senate bill also includes a section to deter challenges to the decisions made by judges appointed under the old system. The “Defense to Challenge of Appointment” clauses set forth that administrative patent and trade mark judges can defend against challenges to the legitimacy of their appointment by claiming that “the administrative trade mark judge so appointed was acting as a de facto officer”.
The bill also allows the commerce secretary to appoint judges previously selected by the USPTO director and to deem the new appointment effective from the date of the old one.
In a statement, Senator Leahy said: “It is important to ensure that the decisions made by these judges are allowed to stand on their merits, and that they are not nullified by a potential constitutional challenge to the appointment process somewhere down the line. By making this small change to the existing law, Congress can leave no doubt that the appointment of these judges complies fully with the process set out by the Constitution.”
House consideration of the bill was postponed on July 29, and a motion to reconsider was agreed on July 31.
