The Board of Patent Appeals and Interferences (BPAI) was an administrative law body of the

United States Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alex ...

(USPTO) which decided issues of

patentability Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met fo ...

. Under the America Invents Act, the BPAI was replaced with the

Patent Trial and Appeal Board The Patent Trial and Appeal Board (PTAB) is an administrative law body of the United States Patent and Trademark Office (USPTO) which decides issues of patentability. It was formed on September 16, 2012, as one part of the America Invents Act. P ...

(PTAB), effective September 16, 2012.

Structure

The BPAI was primarily made up of an Appeals Division and a Trial Division. The Appeals Division, with over 100 Administrative Patent Judges, handled appeals of

patent examiner A patent examiner (or, historically, a patent clerk) is an employee, usually a civil servant with a scientific or engineering background, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the Un ...

rejections, with sections adjudicating different technology areas. The Trial Division, with 11 Administrative Patent Judges as of 2008, handled contested cases or

interference proceeding An interference proceeding, also known as a priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. It is a proceeding unique to the patent law of the United States. Unlike in most other cou ...

s. The BPAI was headed by a Chief Administrative Patent Judge with a Vice Chief. As of mid-2013, the Chief Administrative Patent Judge was James Donald Smith.

Procedures

An applicant could appeal the examiner's decision to the BPAI. The appeal procedure was described in chapter 1200 of the U.S.

Manual of Patent Examining Procedure The ''Manual of Patent Examining Procedure'' (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be follo ...

(MPEP). Typically, appeals to the BPAI were conducted ''

ex parte In law, ''ex parte'' () is a Latin term meaning literally "from/out of the party/faction of" (name of party/faction, often omitted), thus signifying "on behalf of (name)". An ''ex parte'' decision is one decided by a judge without requiring all ...

''. Decisions of the BPAI were typically rendered as an opinion.

Appeals

Decisions of the BPAI could be further appealed to the

United States Court of Appeals for the Federal Circuit The United States Court of Appeals for the Federal Circuit (in case citations, Fed. Cir. or C.A.F.C.) is a United States court of appeals that has special appellate jurisdiction over certain types of specialized cases in the U.S. federal court ...

(CAFC) under . The decisions of the CAFC may also be reviewed on a discretionary basis by the

United States Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...

. The U.S. Supreme Court is the ultimate authority on the judicial standards for patentability. The

United States Congress The United States Congress is the legislature of the federal government of the United States. It is bicameral, composed of a lower body, the House of Representatives, and an upper body, the Senate. It meets in the U.S. Capitol in Washing ...

, however, can change the patent laws and thus override a decision of the Supreme Court. An alternative path was a civil action against the

Director of the United States Patent and Trademark Office The Under Secretary of Commerce for Intellectual Property, or USC(IP), is a senior official in the United States Department of Commerce and the principal advisor to the United States Secretary of Commerce on the intellectual property matters. In t ...

in the U.S. District Court for the District of Columbia under . Any appeal arising from such a case would then be directed to the CAFC under .

Constitutionality

In 2007, Professor John F. Duffy, a widely recognized

patent law A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...

scholar, argued that, since 2000, the process of appointing judges to the BPAI has been unconstitutional, because the judges were appointed by the Director of the U.S. Patent and Trademark Office rather than by the Secretary of Commerce (a "Head of Department" under the Appointments clause of the Constitution).John F. Duffy
''Are Administrative Patent Judges Unconstitutional?''
2007, Patently-O Patent L.J. 21, or Duffy, John F., "Are Administrative Patent Judges Unconstitutional?" . Available a
ssrn.com
/ref> This problem has since been rectified and current Administrative Patent Judges are appointed by the Secretary of Commerce.

References

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External links