President George W. Bush signed legislation Aug. 12, 2008, to cure a potential constitutional flaw in the appointment of administrative patent and trademark judges by the Director of the United States Patent and Trademark Office (PTO).

Public Law 110-313, 122 Stat. 3014, goes into effect immediately and will ensure the future validity of appointments of administrative judges under the Appointments Clause of the Constitution (Art. II, sec. 2, cl. 2). The statute is intended to bolster arguments, currently being litigated, that both the appointments and rulings of approximately 50 judges (of 81 total on two appeals boards) should be deemed valid retroactively.

Constitutional challenges to the validity of appointments by the PTO Director and, by extension, to the appointed judges’ rulings, were spawned last year by an academic article. In his article, “Are Administrative Patent Judges Unconstitutional,” 2007 Patently-O Patent L.J. 21, Professor John F. Duffy asserted that 35 U.S.C. section 6, which since 2000 has allowed the PTO Director to appoint administrative patent judges, violates the Appointments Clause. The Constitution empowers Congress to vest the appointment of “inferior officers” in the President, the courts or the heads of departments. Because the PTO Director is not a department head within the judicially determined meaning of the Appointments Clause, Public Law 110-313 provides that future appointments must be made by the Secretary of Commerce (a recognized department head) “in consultation with” the PTO Director.

The legislation also attempts to ratify both the past appointments of the PTO Director and validate those appointees’ decisions retroactively by declaring the affected judges “de facto officers,” and stating that this designation may be cited as a defense against court challenges to the appointments.

One such challenge has already reached the U.S. Supreme Court. A petition for a writ of certiorari was filed on April 16 in Translogic Technology v. Dudas (U.S., No. 07-1303), appealing a ruling of the U.S. Court of Appeals for the Federal Circuit that the Board of Patent Appeals and Interferences (BPAI) properly rejected as invalid for obviousness an underlying patent. The BPAI panel had as one of its members an administrative judge who was appointed by the PTO Director in April 2004. See In re Translogic Technology Inc., 504 F.3d 1249 (Fed. Cir. 2007). In this matter, the PTO refused a rehearing on the grounds that an objection under the Appointments Clause should have been raised before the BPAI issued its decision. The petitioners argued that, because the PTO does not publicize the composition of panels prior to oral arguments, such an objection was not possible. The Supreme Court has not determined whether to grant or deny the petition.

Public Law 110-313 does appear to calm roiled constitutional waters. But, it may not be the final word because the federal judiciary serves as the ultimate arbiter of constitutional questions. In any event, any litigant who has a matter before the BPAI or the Trademark Trial and Appeal Board, with a sitting judge appointed by the PTO Director, should be aware not only of the constitutional issues but also of the intervention of Congress in this matter.