Are Administrative Patent Judges Unconstitutional?

DuffyIn his recent essay [LINK], Professor John Duffy raises the shocking point that since 2000, the appointment process of BPAI Judges has been unconstitutional. Generally, administrative officers must be appointed by a cabinet level official. Under 35 U.S.C. 6, however, the PTO director appoints the board. This disconnect, created by the 1999 patent reform measures, creates a serious constitutional problem.

If Professor Duffy is right (1) the law must be changed; (2) recently appointed BPAI judges will need to be re-appointed in a proper manner; and (3) any pending BPAI appellant could raise the issue as a challenge to BPAI authority so long as the panel includes recently appointed judges.

21 thoughts on “Are Administrative Patent Judges Unconstitutional?

  1. 21

    “Cabinet supervision is thin at best and nonexistent with regard to adjudicatory decisions”

    Duffy makes the case (persuasively IMO) that the head of a sub division of a federal agency is not a Department Head. What’s your counter argument?

  2. 20

    Interesting article. It could have been broader; I see no distinction between BPAI and TTAB decisions — and possibly Sec. 32 cases.

    With the exception of the last, whatever the basis(es), I doubt that prior decisions would be invalidated.

    I agree that board members require appointment as Duffy outlines. In light of BUTTERWORTH v. UNITED STATES ex rel. HOE, 112 U.S. 50 (1884), however, I wonder if he was too quick to dismiss the Director as having capacity to appoint. Cabinet supervision is thin at best and nonexistent with regard to adjudicatory decisions.

  3. 19

    Also, PLI’s website identifies Mr. Spar as having retired from the PTO (see link to Since Martindale indicates that he is 66/67, it would make sense that he retired from the PTO.

  4. 18

    Per the PTO’s database, he is listed in Silver Spring, MD, but no employer/firm is identified. Interestingly, it also shows that he became a registered patent attorney on March 5, 2007. I suppose it could be a different Robert J. Spar (did he have a son?), however, Martindale only identifies one Robert J. Spar (and Martindale still shows him as being with the PTO).

  5. 17

    Ok let’s bring this full circle. I have been trying to determine Mr. Spar’s present employer. Can anyone assist in this regard? I am most interested in determining whether he is working for an entity that benefitted from his irrational post final practice policy implementations. They can run but they can never hide ๐Ÿ™‚

  6. 16

    Bob Spar left the PTO around late December 2006/early January 2007. Rob Clarke is the new Director of OPLA.

  7. 15

    KCB wrote “I then followed-up and learned that he left late in 2006.”

    If he’s left, I don’t think it was in 2006, although it could have been. I saw him speak at PTO Day in early December of last year. You don’t perhaps mean Robert Bahr, do you?

  8. 14

    The majority opinion in Freytag says that the Tax Court of the United States is not an executive agency – “The Tax Court remains independent of the Executive and Legislative Branches.” (although one could argue that this is dicta, since the majority does not rely on this characterization in reaching its decision). The concurring opinion in Freytag, however, concludes that the Tax Court is an executive agency. In fact, this could be very significant in any challenge of the current manner in which BPAI judges are appointed.

    In Freytag, the majority concluded that the Tax Court was an independent agency and therefore not a “Department” (i.e, not a cabinet-level executive agency). The majority did, however, conclude that the Tax Court was a “Court of Law,” and therefore its chief judge could appoint subordinate judges (“Inferior Officers”) pursuant to the Appointments Clause (Art. II, Sec. 2).

    In his concurrence, Scalia (joined by O’Connor, Kennedy and Souter) disagreed with the characterization of the Tax Court as an independent agency and did not believe that it was a “Court of Law.” Scalia believed that the Tax Court is an executive agency and therefore its “Inferior Officers” could only be appointed by the President, Courts of Law, or “Heads of Departments.” Importantly for the BPAI, Scalia concluded that, since the Tax Court was not part of another agency in the executive branch, the chief judge of the Tax Court was a “Department Head” under the Appointments Clause. Scalia stated:

    “I have already explained that the Tax Court, like its predecessors, exercises the executive power of the United States. This does not, of course, suffice to make it a “Departmen[t]” for purposes of the Appointments Clause. If, for instance, the Tax Court were a subdivision of the Department of the Treasury – as the Board of Tax Appeals used to be – it would not qualify. In fact, however, the Tax Court is a freestanding, self-contained entity in the Executive Branch, whose Chief Judge is removable by the President (and, save impeachment, no one else). Nevertheless, the Court holds that the Chief Judge is not the head of a department.” In other words, the head of an executive agency (e.g., the PTO) which is part of another executive agency (e.g., the Department of Commerce) is not a Department Head under the Appointments Clause.

    It seems clear to me that the director of the USPTO is NOT a “Department Head” under the Appointments Clause – all 9 Supreme Court Justices concluded this in Freytag in 1991.

  9. 12

    There was no announcement of Mr. Spar’s depature. I learned after, once again having to explain the illegalities of his policies to him, I obtained a voicemail message concerning an unassigned number. I then followed-up and learned that he left late in 2006. I believe it coincided with the depature of the assignment commissioner whom Peterlien replaced.

  10. 11

    Who’s going to break it to the Examiners that they are “lesser functionaries” lacking significant powers? Or do Examiners need Senate confimation too?

  11. 10


    When did Bob Spar leave? Was there an announcement–I didn’t see one? Do you know who is replacing him as Director of OPLA?

  12. 9

    You’re actually wrong for dismissing the “court of law” category which got the Tax Court out of the problem in Freytag. I can’t find much to distinguish the tax court from the BPAI, for the purpose of the “court of law” analysis under the appointment clause (it exercises similar powers). “35 U.S.C. ยง 6, establishes the Board’s membership as the Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the Administrative Patent Judges.” Therefore, the Director, as a member of the board can appoint other members of the board just like the chief tax judge in Freytag.

  13. 8


    My thinking is the same way. The Applicant filed a Notice of Appeal and briefs on time. The PTO failed to provide a legitimate Board of Appeals to hear the case (if any member of the panel was appointed under the new statute) and thus the case is still pending at the BOPAI, awaiting a legitimate Board to pick it up. In the mean time, the Patent Term Adjustment clock is ticking.

    So assuming our law professor above is correct on all points, the PTO has a big time bomb on its hands and an insufficient Appeals staff for defusing it. Interesting.

  14. 7

    I believe that AdminLawWasYearsAgo is incorrect.
    The issue here is jurisdiction. Any decision rendered by an incompetent court, one without jurisdiciton, is meaningless. The Court never has jurisdiction and from my understanding there are no statue of limitations concerning issues surrounding jurisdiction (challenging the same). The decision could be attacked at any time.

  15. 6

    “So what happens to the decisions rendered by these illegally appointed “judges”? Are they discarded?”

    A party not prevailing before the BPAI must raise the issue at least before the court of appeals. (the Court may raise constitutional issues sua sponte I think). Past BPAI decisions and appeals where the issue of unconstitutionality is not raised are not affected.

  16. 5

    So what happens to the decisions rendered by these illegally appointed “judges”? Are they discarded?

  17. 4

    I like dumping on the current administration,s problems with the Constitution too, but this really doesn’t seem to be a problem I’d tar the current commissioner with. The Under Secretary seems to be doing exactly what Congress said he ought. It also appears that the problem cannot readily be blamed on the current administration as the change in wording to the applicable statute predates Bush’s first term.

  18. 3

    Are you surprised that PTO Directors such as Dudas, illegally appointed themselves by a Cabinet level officer such as Gutierrez, have no problem working with illegally appointed BPAI judges who are supposed to be appointed by Gutierrez? If you are not going to complain about appointments to the head of the PTO in violation of 35 USC 3, don’t whine about appointments of BPAI judges.

  19. 1

    Thank you. As I had repeatedly stated to Bob Spar, who recently departed the USPTO. The entire executive agency system is prima facie unconstitutional. Its legitimacy hangs by the thinnest of threads called the Administrative Procedures Act. That is why any rule promulgated by the USPTO had better be based upon an expressed authorization of Congress.

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