It must be spring, and a delightful spring at that. Like swallows to Capistrano, numerous pigeons created by the IP mafia over the years are at last coming home to roost. Today's NYT provides the most recent returning pigeon dropping its unintended consequence out of a clear blue sky.
Those of us old enough to remember the 1999 Omnibus Appropriations Act will remember that it included many pieces of special legislation at the behest of the IP mafia. One of these was the creation of a special board of patent judges who exist solely to reverse any patent examiner diligent enough and brave enough to disallow a patent (35 U.S.C. 6). The Board consists of the Director of the PTO, the Commissioner for Trademarks, and the Commissioner for Patents. And, in what I am sure was a logical move to clear out backlog, “administrative patent judges.” But, in what was no doubt a move to ensure that the “right” people got put on the board, the power to appoint these administrative patent judges lies with the Director of PTO.
Turns out this was a real bad move from a Constitutional standpoint. As explained by law professor John Duffy in this article, giving the Director of the PTO power to appoint an administrative law judge runs afoul of the “appointments clause” of the Constitution. As a result, the decisions of the Board of Patent Appeals and Interferences (as the relevant administrative body is called) — or at least, decisions of those panels consisting of improperly appointed judges — should be null and void. And since this court only exists to appeal from a denial of a patent by an examiner, that means some number of patents are potentially retroactively void.
At this stage, it is all theoretical. A petition for review has been filed with the Supreme Court, and we shall have to see if they bite. In the meantime, expect folks to go rushing back to Congress to get this fixed. But while Congress can certainly fix it going forward by vesting authority to appoint these judges in an appropriate official (the President or the Secretary of Commerce, for example), it is unclear to me if Congress can retroactively revive patents that had been rejected by examiners and are now only sustained by a decision of the improperly constituted panel. Indeed, like some sort of legal Schroedinger's Cat, I suspect Congress' ability to legislatively grant/affirm the patents (at least with regard to retroactive effect predating the legislation) may depend on whether the patents are still viable patents at the time the legislation is enacted (I confess, retroactivity gives me a headache and gladly defer to others who understand it better).
Either way, it is quite a mess with a fair amount of mad scrambling, made all the more funny by the fact that it flows from trying to maintain such tight control over the process. It also means going to Congress and trying to push through something on patent reform, at a time when Patent Reform is a hot bone of contention on a number of fronts (even if it remains somewhat stalemated of late). Given that there will be tremendous pressure from the IP mafia to pass a legal fix, it provides an ideal opportunity to try to leverage something more fair-use-and-innovation friendly as part of an overall reform effort.
Hopefully, friends of free flow of information will remain alert for opportunities. Meanwhile, I hope this delightful spring weather persists, and more IP pigeons com home to roost.