BPAI Administrative Patent Judges

There continues to be interest in the BPAI appointments problem identified by Professor John Duffy. The solution going forward is quite simple — change the law so that BPAI administrative patent judges will be appointed by the Secretary of Commerce then re-appoint the current judges.  No one is arguing that the BPAI judges are incompetent or lack qualifications for their position — only that they have been appointed in a way that runs contrary to the Constitution.  This issue may not come to a head until demanded by a court of law. The Translogic petition for certiorari is one avenue, although many more will follow until a clear resolution is reached. 

In 2000, the BPAI judge appointment law changed to require the PTO director to appoint the administrative patent judges rather than the Secretary of Commerce. Through a FOIA request, Wendy Gombert and Joel Ard from the Black Lowe firm recently obtained a listing of the 47 BPAI judges who have been appointed since the law was amended. [THE LIST].

To get some sense of the impact of these judges, I looked at the 2500+ BPAI decisions between March 2007 and March 2008 and found most of those decisions (83%) included at least one panel member that had been illegally appointed under the Duffy construction. A significant number of panels (44%) included a majority of illegally appointed judges, and about half of the opinions were authored by illegally appointed judges. By technology center, applications classified in TC1700 (Chemical and Material Engineering) had the fewest opinions drafted by the illegal appointees while TC1600 (Biochemistry and Organic Chemistry) had the most. This difference is likely primarily due to the core group of veteran TC1700 judges.



24 thoughts on “BPAI Administrative Patent Judges

  1. 24


    I would guess the recent uptick in their production can be attributed to the recent hiring of a number of attorney clerks to aid the judges in getting their opinions out.

  2. 23

    The congressionally preferred course of action is simple. Duffy disappears one night, the interwebs have all traces of articles and mentions of Duffy and “BPAI” AND “UNCONSTITUTIONAL” deleted, congress makes the amendment, and we all go on with our happy lives.

  3. 22

    Assuming that Congress did amend the law as suggested, it would solve the problem going forward, but what would happen to all the decisions that have been made since 2000 by judges whose appointment was unconstitutional at that time? Could these decisions somehow be retroactively validated by the re-appointed judges? Also, passing such a law would be an implied admission by Congress that the previous appointments are unconstitutional. While the ultimate decision as to the constitutionality of these appointments rests with the Supreme Court and not Congress, moving to legislation at this point may amount to a political defeat for those who have a stake in ensuring all the decisions made by the post-2000 PTO judges up to this point remain valid.

  4. 21

    Professor John Duffy – another egghead (no offense) who is completely right, will spend years in litigation to reach the U.S. Supreme Court, only to have the five-of-nine twist-da-logic to prevent/prevert the patent system from falling asunder. In any event, Duffy should continue to pound away at ’em to let them know that they are being watch and their behind closed doors back slapping ways won’t always stand.

  5. 20

    So it still has a few bugs to work out. Throw me a bone why don’t you.

  6. 19

    Perhaps Patents.com will be successful, but I have my doubts. I can get references from espacenet.com and the JPO website for free, without reviewing advertisements. Critically importantly, to the extent I rely on machine translations, at least I can point to the translations being received from “official” websites. I won’t risk filing an IDS with a translation from “Fred’s Automated Translation Software” (apologies to any Freds on the board that write software). Still further, how useful is it for patent lawyers to advertise on a website primarily used by patent lawyers? Other than those problems (that destroy its usefulness), the site is a great idea.

  7. 18

    As an aside, I was looking at the BPAIs production. Apparently they are starting to kick it up a notch, which could be good for Appellants. Reversals are usually much shorter than affirming the examiner. However, I’ve still got LOTS appeals that have been with the USPTO betwen 12-18 months from when the reply brief was filed.

  8. 17

    The new BPAI rules have been issued:

    link to uspto.gov

    I spent awhile reading the comments section …. what a joke. They take the time to address minor issues and give short shrift to many of the important questions.

    This is the new requirements for the Examiner’s Answer:

    § 41.39 Examiner’s answer.
    (a) Answer. If the examiner determines that the appeal should go
    forward, then within such time and manner as may be established by the
    Director the examiner shall enter an examiner’s answer responding to the appeal brief.
    (b) No new ground of rejection. An examiner’s answer shall not include a new ground of rejection.

    One of the problems I saw with the original proposal was that a considerable amount of new requirements were being placed on appellants yet none on the examiner (despite the benefits associated with the new changes also being applicable to the examiner). Apparently, they decided they were going to eliminate even more requirements from the examiner’s answer. Their rationale, which I won’t reproduce, is also a joke.

    The kept most of the cr@p in that they initially proposed. I could go on and on and on, but it is useless at this point.

    I will, however, make one more comment in that their ecomomic analysis as to how much additional expense this will impose in a joke. For example, on page 32969 (third column at end), the statement that the statement of facts section will not add to the appeal brief preparation cost and in many cases it will be a small cost savings. That section alone is going to suck up a lot of my time. Miss a fact necessary for your argument and you are screwed.

  9. 16

    “No one is arguing that the BPAI judges are incompetent or lack qualifications for their position”

    Oh really? There are quite a lot of poorly reasoned BPAI options, however. I guess this means that they are qualified, but many of them choose not to do a good job.

  10. 15

    There has been at least recent one constitutional challenge by an applicant whose rejected claims were affirmed by the BPAI.

    See Aldor Solutions Corp. v. Dudas, (1:08cv897), U.S. District Court for the District of Columbia

    Read about it at

    link to 271patent.blogspot.com

    The appeal was filed not with the CAFC but with the District Court. The employment of this legal strategy avoids the problem faced by Translogic with its petition for cert (i.e., failed to timely raise the issue in the lower courts).

  11. 13

    Apologies for the off-subject comment, but the buyers of Patents.com just revealed in a translated article that they paid $1.1 million for it:

    “These days, Zapolin and Miller are testing a slightly different model, which requires all the expertise they acquired at search engines, as well as new skills. This is Patents.com, which will create a database of every patent registered in the world, and an arena for peoples seeking to trade in patents.

    Zapolin and Miller bought the name from two lawyers who had dissolved their partnership and neither of which had enough money to buy out the other. They therefore decided to put the website up for a tender and see how much they would be offered. “Andy and I called them and told them, ‘Listen, why bother to put up your site for a tender? We’ll give you $1.1 million with an immediate transfer to your account,” relates Zapolin.

    However, buying the name wasn’t enough for what Zapolin and Miller had in mind. The next stage was to buy a company called Patent Monkey, which owned patent search technology, and then to reach an exclusive agreement with another company that owned translation software. The future result: a database of 30 million patents from the United States, Asia, and Europe in 15 languages, which creates 450 million documents.

    Use of the search engine will be gratis, and the idea is to generate revenue from advertising, especially by patent registrars and attorney who deal with intellectual property, as well as a percentage of the transactions made in the arena, similar to the model of eBay. Zapolin and Milleris site will also contact people whose patents are about to expire and they’ll offer them to sell it before that happens.”

  12. 12

    Thanks, GW 06 grad, your suspicion about what I meant is correct, and the article is interesting.

  13. 11

    “If they sound the alarm too loudly, and try to get urgency legislation passed to correct the problem, they are giving fodder to current litigants, and further raising the profile of the problem.”

    Sounds horrifying.

  14. 10

    “Has anyone argued that Prof. Duffy is wrong?” I argued with him several times when I had him for torts, but I suspect you were looking for something more along the lines of this:

    link to ipfrontline.com

  15. 9

    “Has anyone argued that Prof. Duffy is wrong?” I argued with him several times when I had him for torts, but I suspect you were looking for something more along the lines of this:

    link to ipfrontline.com

  16. 8

    Has anyone argued that Prof. Duffy is wrong?

  17. 7

    That’s nice Greg, thanks for sharing your political point of view, but the law was passed in 2000, during the Clinton administration, so your view is pretty much nonsense. They are probably figuring out the best way to handle this, and protect the decisions made by these illegally appointed panels. They have a mess on their hands, and they know it. If they sound the alarm too loudly, and try to get urgency legislation passed to correct the problem, they are giving fodder to current litigants, and further raising the profile of the problem. The way they should be handling it is to be working this through back channels to try to get a fix passed by attaching it to unrelated legislation before the end of this session. They can take the position that it’s really no big deal but they just decided to go ahead and “clean it up”.

  18. 6

    The logic of illegality in this Administration is as follows: illegally appointed PTO Directors and Deputy Directors can illegally appoint BPAI judges. In the twisted constitutional logic of the current administration, the “illegally”s cancel out. Why is anyone thus complaining? And all of these media accounts and blog accounts about the judges are a waste of time if they don’t also mention the illegal appointments of Dudas, Pinkos and Peterlint as PTO Deputy Directors. There are interrelated illegalites. Not that anyone really cares.

  19. 5

    Weird – looking at the list, there are hardly any BPAI member appointed between 2001-2006. But a ton in 2000 and 2007. I guess different administrations take different positions on BPAI membership?

  20. 4

    Does the PTO believe there is a problem?

    The PTO cannot fix this without help from Congress. So far, challenges to the status quo haven’t really gotten anywhere. Maybe if the SC grants cert, or if the issue gets raised at the PTO in a way that obligates the CAFC to rule on the issue, the PTO will see a renewed sense of urgency.

  21. 3

    John, do you think that DC wants to stay a prof at a second-tier law school forever? Charts and stats worked to get KM on the CAFC, why shouldn’t they work for Dennis? At least, unlike Moore, he actually has some drafting and prosecution experience. ‘Course if it were up to me, I’d appoint someone with significantly more hands-on experience than either of them.

  22. 2

    What I wonder is, why isn’t anybody (apparently) in any hurry to correct this problem? It seems to be a non-issue, as far as the Patent Office is concerned.

  23. 1

    Why has this blog become the USA Today? Enough with the useless stats and charts already. The patent world does not need another Kimberly Moore churning out irrelevant statistics dug up by an army of 1Ls.

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