Back in 1992, 75% of the judges on the Board of Patent Appeals and Interferences sent a memo to the Commissioner of Patents and Trademarks. \u00a0The memo objected to instances in which the composition of panels of the Board had been manipulated or re-constituted. \u00a0That is a pretty remarkable consensus among the judges (then known as “Examiners-in-chief”) of the Board.<\/p>\n
The text of the letter is as follows:<\/p>\n
We wish to express our concern regarding matters that carry disturbing implications of which you may not be aware. \u00a0There are an increasing number of instances in which the composition of panels of the Board of Patent Appeals and Interferences (BPAI) has been manipulated in a manner which interferes with the decisional independence of the Board and gives the appearance that a predetermined or predecided outcome has been reached in cases appealed under 35 USC \u00a7134.<\/span><\/p>\n
Recently, for example, a randomly selected three member panel, acting pursuant to its statutory authority, reached and signed a decision, favorable to the appellant in Application Serial No. ***. \u00a0The issues in this application involved matters requiring special knowledge of *** technology and case law. The three member panel assigned to decide the appeal was constituted of individuals having this special knowledge.<\/span><\/p>\n
For reasons unknown to us, the Chairman of the BPAI prevented the mailing of that decision. \u00a0He subsequently convened a special panel formed only of management officials, namely the Commissioner, the Deputy Commissioner, the Assistant Commissioner for Trademarks, the Chairman and the Vice-Chairman of the BPAI. \u00a0All of the original panel members were replaced. \u00a0To our knowledge, none of the new panel members has any special expertise or knowledge in *** technology or case law. \u00a0The management panel rendered a decision opposite in result to that reached by the legally constituted original panel, making no mention of the earlier decision. \u00a0These circumstances reflected an appearance of impropriety, e.g., an appellant being denied procedural due process within the U.S. Patent and Trademark Office.<\/span><\/p>\n
It is the function of the BPAI to interpret case law of reviewing courts of the United States Patent and Trademark Office and apply this case law in reaching decisions on appeals. \u00a0It is the function of either the Court of Appeals for the Federal Circuit or the District Court of the District of Columbia to review the decisions of the BPAI. \u00a0There is no<\/em> statutory authorization for any individual or individuals other than the above-noted Courts for reviewing decisions of the BPAI.<\/span><\/p>\n
Interference with the decision making process of any agency’s authorized appellate board of review has at least the appearance of being improper. \u00a0Compare 5 USC \u00a7554.<\/span><\/p>\n
While we have referenced only a single appeal in which we believe impropriety may have occurred, there is a disturbing pattern of interference with the normal course of deciding appeals by this BPAI, either by special selection of panels or by oral threats to panel members that they will be removed from a panel if they decide “the wrong way.”<\/span><\/p>\n
The Commissioner is authorized under 35 USC \u00a77 to “designate” the members of a panel. \u00a0There is no apparent authority, statutory or otherwise, to un-designate a duly formed panel and to redesignate a completely new panel for any purpose, let alone the purpose of reaching a conclusion opposite to that of the original panel, after the original panel not only reached a decision, but signed that decision.<\/span><\/p>\n
These matters raise questions of a very serious nature including ultra vires<\/em> agency action, interference with the judicial independence of the BPAI and denial of an appellant’s right to procedural due process.<\/span><\/p>\n
We respectfully submit this memorandum to apprise you of these matters and to formally disavow even the appearance that we condone them.<\/span><\/p><\/blockquote>\n
In response to the letter, Commissioner Manbeck responded to the examiners-in-chief that they were not judges. \u00a0His response stated in part:<\/p>\n
In the last paragraph on page 2 of the communication of April 24, 1992, there is a reference to the “judicial independence” of the Board. \u00a0But, the Board is not a judicial body. \u00a0It is an administrative body within the Patent and Trademark Office, none of whose members are judges. \u00a0The Board’s responsibility is to assist the Commissioner by deciding ex parte appeals and inter partes interference cases.<\/p>\n
The members of the Board are employees of the Patent and Trademark Office. \u00a0Accordingly, they are expected to follow the policy established by the Commissioner for the Patent and Trademark Office.<\/p><\/blockquote>\n