In the Supreme Court’s opinion in Brenner v. Manson, there is an interesting footnote, footnote 6, that makes a comment about whether the then-Commissioner of the USPTO was bound by determinations of the Board of Patent Appeals and Interferences. The footnote reads:
[6] We find no warrant for this curious limitation either in the statutory language or in the legislative history of § 1256. Nor do we find persuasive the circumstance that the Commissioner may not appeal adverse decisions of the Board of Appeals. 35 U. S. C. §§ 141, 142, and 145 (1964 ed.). As a member of the Board and the official responsible for selecting the membership of its panels, 35 U. S. C. § 7 (1964 ed.), the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his seeking review of adverse decisions rendered by the CCPA.
That remark is informed by the oral argument from Brenner v. Manson. First, Justice Byron White had this exchange with Paul Bender, arguing on behalf of the USPTO:
Byron R. White: Mr. Bender, is the Board of Appeals in the Patent Office, under the control of the Commissioner or not?
Paul Bender: I don’t know what control means —
Byron R. White: Well I mean that —
Paul Bender: — the statute says the Commissioner is in charge of the whole Patent Office.
Byron R. White: Yes.
Paul Bender: The Board of Appeals is part of the Patent Office.
Byron R. White: He can’t go up from there, can he?
Paul Bender: No, he is part of the Board of Appeals.
Byron R. White: Yes.
Paul Bender: It would be wholly anomalous after they —
Byron R. White: That’s what I wanted to know.
Paul Bender: Yes, there’s no question that he cannot go.
The statute provides —
Byron R. White: But he’s part of the Board.
Paul Bender: Yes, he’s a member of the Board.
And I take it the reason is that he’s not only a member of the Board but the Board is under his jurisdiction, he is the head of the Patent Office, it wouldn’t make any sense.
The only reason to which they give is indeed what Mr. Justice White just mentioned.
Namely, that the Commissioner is the — cannot go to the Court of Customs and Patent Appeals, and so they say therefore the Commissioner shouldn’t be able to go to the Supreme Court.
Well, the reason the Commissioner can’t go to the Court of Customs and Patent Appeals is what we’ve just said.
It’s his own decision.
He couldn’t challenge the decision he had just rendered, but the Court of Customs and Patent Appeals can as it has here decide against him.
And in view of that, I see no reason why he shouldn’t then be able to invoke the jurisdiction of this Court.
Later in the oral argument, Dean Laurence, arguing on behalf of the patent applicant, responded with these remarks:
Dean Laurence: A primary examiner.
And at this point, let me very quickly describe, because I think Mr. Justice White asked a question whether the Board of Appeals was under control of the Commissioner.
Let’s look at the Patent Office for a moment.
We have — when an application is filed, a group of people called examiners and there is of course in the hierarchy a primary examiner.
Now, the primary examiner and all of his helpers are arms of the Commissioner.
The Commissioner is charged with examining the patent.
So as far as we are concerned here, a primary examiner is the Commissioner.
Now, if the examiner by the Commissioner says, “I won’t allow that patent for any reason at all because it’s not in compliance with the Section 112 which says you must fully describe how to make and how to use the claimed invention.”
Or any other reason, then the applicant has recourse to a Board of Appeals.
Now the Board of Appeals is not under the control of the Commissioner.
The Board of Appeals is a separate body.
The members of the board are nominated by the President, confirmed with the advice and consent of the Senate, and they sit as a board.
The Commissioner of Patents is a member of the Board of Appeals but he does not control the Board of Appeals and cannot reverse a decision of the Board of Appeals.
Insofar as I’m aware, it’s never been done.
I do not believe it can be done.