Patent Office Struggling With Arthrex's Impact on Agency

U.S. Patent and Trademark Office officials are grappling with a Federal Circuit ruling that the agency’s Patent Trial and Appeal Board judges were unconstitutionally appointed, but still aren’t publicly discussing how they’ll respond.

The agency has been “in constant discussions” with other parts of the Trump administration about the appeals court’s Arthrex Inc. v. Smith & Nephew Inc. decision, Director Andrei Iancu said during a Nov. 14 Patent Trial and Appeal Board Bar Association event.

“We will see where this goes,” Iancu said.

The decision’s impact on ex parte appeals, or challenges to patent examiner decisions, remains somewhat an open question, Iancu said. Ex parte appeals account for most of the PTAB’s work, he said, and the agency has been trying to reduce the processing time for such appeals.

If Arthrex forces the PTO to hear ex parte cases on remand, Iancu said it could affect the process.

The U.S. Court of Appeals for the Federal Circuit Oct. 31 held that PTAB judges were unconstitutionally appointed, and severed part of a federal patent law that prohibited the judges from being fired without cause, as a remedy.

Iancu jokingly referred to “unconstitutional PTO employees,” but noted that the Arthrex panel declared that “judges are constitutional again” with its remedy and that future PTAB disputes “are okay, according to that case.”

However he said the agency “really cannot comment on any specifics” about the agency’s next steps, citing pending cases in which litigants have raised constitutionality challenges in appeals of PTAB decisions.

PTAB Chief Judge Scott Boalick told the practitioners they should feel free to submit “suggestions or questions” for the agency to put out guidance.

Iancu, however, said it’s not immediately clear what sort of guidance a practitioner would need.