It was a tiny change, hidden in an omnibus bill Congress enacted in 1999. But nine years later it is threatening to create havoc for the U.S. patent system.

At the time, the legislative provision seemed unimportant. It slightly altered the process for appointing administrative law judges to serve on the PTO's Board of Patent Appeals and Interferences (BPAI), which hears appeals of the decisions made by patent examiners. The 1999 law provided that as of March 2000, new BPAI judges would no longer be appointed by the Secretary of Commerce.

They would be appointed instead by the head of the PTO. There's just one problem with this change. The new appointment process may be unconstitutional.

This problem was first raised in a July 2007 article by John Duffy, who teaches patent and administrative law at George Washington University Law School.

There is now widespread agreement among legal experts that Duffy is correct: The process for appointing BPAI judges runs afoul of the Constitution's little known Appointments Clause.

The issue may soon come before the U.S. Supreme Court. The appellant in Translogic Technology Inc. v. Dudas has filed a certiorari petition seeking to invalidate an adverse BPAI ruling on the grounds that one of the judges on the panel was unconstitutionally appointed.

The fallout from Translogic could be huge. The Court could invalidate every BPAI decision handed down throughout the past eight years in which an unconstitutionally appointed judge sat on the three-judge panel. This would cast "a cloud over many thousands of board decisions ... unsettling the expectations of patent holders and licensees across the nation," according to a court paper filed by the Justice Department.

Clause for Concern
For the framers of the Constitution, the issue of who could appoint government officers was no mere technicality. They knew, from the country's colonial experience, the danger of a powerful government bureaucracy that had no popular check on its actions. "[T]he power of appointment to [government] offices was deemed the most insidious and powerful weapon of 18th century despotism," the Supreme Court has stated.

Thus, Article II of the Constitution contains a provision that makes all important government appointments subject to political control. The Appointments Clause specifies that the most important executive and judicial positions are appointed by the president, subject to advice and consent from the Senate. The clause goes on to state, "Congress may by law vest the Appointment of such inferior Officers, as they think proper, in the President alone, in the Courts of Law, or in the Heads of Departments."

BPAI judges seem to be "inferior officers," based on the criteria set down in the Supreme Court's 1991 decision in Freytag v. Commissioner of Internal Revenue.

In that case, the Court held that "special tax judges" of the U.S. Tax Court were inferior officers subject to the Appointments Clause, and not merely employees of the Tax Court, because their office was established by statute; they performed "more than ministerial tasks"; they "take testimony, conduct trials, rule on the admissibility of evidence, and have the power to enforce compliance with discovery orders"; and they "exercise significant discretion." BPAI judges meet all these criteria, and they exercise greater power than the tax judges at issue in Freytag.