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.
The Director of the PTO is not constitutionally empowered to appoint inferior officers, according to most legal experts. They point to the Supreme Court's ruling in Freytag that, for purposes of the Appointments Clause, departments are "executive divisions like Cabinet-level departments." The PTO, by contrast, is merely an agency within the Department of Commerce.
"There is no doubt," says John McGinnis, who teaches constitutional law at Northwestern University Law School. "The unconstitutionality of these [BPAI] appointments is clear."
This creates a huge problem for the nation's patent system. Of the BPAI's 74 judges, at least 47 have been appointed since March 2000. If their appointments are indeed unconstitutional, they would be unable to hear new cases, and this would slow future PTO patent appeals to a crawl (at least until the 1999 law was changed and new judges could be appointed to BPAI panels). "The remaining judges couldn't handle the volume of cases," Duffy says.