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the Solicitor of the PTO as arbiter of which Board decisions which are appealed to the courts are correctly decided and which decisions are to be published. The Solicitor apparently
sometimes challenges the Board's decisions as they are pending before the court and requires that they be further justified. Board members believe this usurps their decision making authority. The Court of Appeals for the Federal Circuit recently questioned whether the Solicitor can "challenge" the decision of the Board. In re Amos, 953 F.2d 613 (Fed. Cir. 1991). The fact that appellants are excluded from these ex parte contacts raises further issues that should receive consideration.
By exercising control over which Board decisions are to be published, the Solicitor determines which cases are to be deemed precedential. Whether this is a desirable procedure should be reviewed.
1. If Congress intends the position of Examiner-in-Chief to be one requiring some judicial independence than changes to the pay and performance evaluation procedures of the Examiners-in-Chief should be made. For example, the pay for Examiners-in-Chief should be fixed by statute so that the independent judgment of these quasi-judicial officials will be ensured. The manner in which the pay for members of the Boards of Contract Appeals was adjusted in FEPCA provides an appropriate model for this purpose. Prior to FEPCA, the members of the Boards of Contract
Appeals were paid at an annual rate of GS-16. FEPCA substituted
94% of Executive Level IV as the new pay level. 35 U.S.C. § 3 (c) should be changed to set the pay for Examiners-in-Chief at 96% of Executive Level IV. This amount reflects the fact that the Examiners-in-Chief were paid at an annual rate of GS-17 prior to FEPCA and the statutory requirement that they have scientific ability.
The Subcommittee should review the statutory status of the Chairman and Vice Chairman. One solution may be to amend 35 U.S.C. § 7(a) to provide that two of the Examiners-in-Chief be designated to serve respectively as the Chairman and Vice Chairman. Such an amendment would make clear that these
individuals are Examiners-in-Chief with additional administrative duties.3
If this suggestion is adopted, 35 U.S.C. § 3 should be amended to set fixed statutory pay rates for these positions. The manner in which FEPCA provides for the salaries of the Chairman and Vice Chairman of the Boards of Contract Appeals provides an appropriate model. It is suggested that the Examiner-in-Chief who serves as the Chairman be paid at the rate of 100% of Executive Level IV and the Examiner-in-Chief who serves as the Vice Chairman be paid at the rate of 98% of Executive Level IV.
3 If Congress disagrees with the degree of control currently exercised by the Commissioner as set forth in his 4-2992 memo to the Examiners-in-Chief, the Subcommittee may wish to determine whether the continued presence of such management officials on the Board is desirable.
If Congress determines that Examiners-in-Chief positions are quasi-judicial positions with decisional independence, then inclusion of the Examiners-in-Chief in the performance appraisal system under 5 U.S.C. §§ 4301 and 4302 is inappropriate. Appraising the "quality" of decisions by simply counting numbers clearly has a chilling effect on the independent judgment of quasi-judicial officials. The imposition of opinion writing quotas is especially unsuitable when decisions are reached by panels of at least three Examiners-in-Chief. The present
appraisal plan does not take into account that each Examiner-inChief must independently decide the issues presented in a case if the system of three member panels is to be continued.
SEA suggests that 5 U.S.C. § 4301 be amended so that part (2)(D) lists Examiners-in-Chief appointed under 35 U.S.C. § 7 as not being included in the definition of "employee" subject to the performance appraisal requirements of 5 U.S.C. § 4302 as is already the case for administrative law judges.
The Examiners-in-Chief provide an avenue within the agency where the adverse decisions of the patent examiners may be reviewed. The issue before Congress is clearly identified by the April exchange of memos between the Examiners-in-Chief and the Commissioner: does Congress intend Examiners-in-Chief to exercise independent decision-making authority of a quasi-judicial nature or does it intend that they serve only as agents of the
Commissioner to review decisions of patent examiners and ensure
that such decision are in line with the Commissioner's wishes?
If the answer is judicial independence, then the statutes need to be changed to allow the free exercise of their judgement by
We believe the recommendations we set forth
would accomplish this result. If the answer is to act as the Commissioner's agents, then no changes are necessary, but such an intent should clearly be set forth.
Thank you, Mr. Chairman.
questions you might have.
I would be happy to answer any
We wish to express our concern regarding matters that carry disturbing implications of which you may not be aware. There are an increasing number of instances in which the composition of panels of the Board of Patent Appeals and Interferences (BPAI) has been manipulated in a manner which interferes with the decisional independence of the Board and gives the appearance that a predetermined or predecided outcome has been reached in cases appealed under 35 USC §134.*
Recently, for example, a randomly selected three member panel, acting pursuant to its statutory authority, reached and signed a decision favorable to the appellant in Application Serial No.
The issues in this application involved matters requiring special knowledge of computer technology and case law. The three member panel assigned to decide the appeal was constituted of individuals having this special knowledge.
*The BPAI is authorized to review appeals from adverse decisions of examiners in patent applications under 35 USC §7 by a panel that includes at least three members of the Board. The Board, in general, includes members having technical expertise in either. the electrical, chemical or mechanical disciplines. Panel selection on a particular appeal in a particular discipline is