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the Board:

The following factors adversely affect the operation of

1. The Chairman and Vice-Chairman are not statutory members of the Board, and therefore all decisions in which they participate would appear on their faces to be null and void. This establishes to all of us at the outset that little consideration is given in the PTO to operating the Board in a proper fashion.


The need to produce a particular number of cases each year in order to earn promotions and awards has at least the underlying effect of causing the EIC's to meet only a minimum standard insofar as the analysis and decision are concerned, that is, when the chips are down, it's quantity over quality.

3. The fact that the Chairman's performance also is based upon the number of cases produced by the Board causes him to actively preach quantity over quality, and to turn a deaf ear to explanations that cases needed additional time and that additional credit should be given for them.

4. Further on the quota system, our Commissioner told us that the top step of our 7-step pay schedule would be impossible for all but one or two to meet, and that the sixth step would be all but impossible. To meet the top two steps now, EIC's must work many hours each week of uncompensated overtime. Thus, the pay plan is based upon working more than 48 hours each week.

5. The performance plan is applied at the whim of the Chairman. As an example, on two occasions, most recently in October of 1991, I was rated only "fully successful," while a colleague with the same production figure was rated "commendable." Initially, my challenge of this was met by the statement that the other man's quality was better than mine. When I asked how this was determined, no explanation could be offered. Then, it was claimed that a numerical error was made, and my rating was upgraded.

6. No accommodation is made in the plan for sick or annual leave, so one must "beg" for credit for extended absence due to illness.

7. The Chairman makes it quite clear on some cases that he wants the decision to fall on the side of affirming the examiner, even to the extent that he has told panel members that if they don't agree he will "find a panel that will." In my case, he once told colleagues that he made a mistake in assigning me to a particular panel because "I didn't analyze claims in the correct fashion." In fact, I had expressed to him earlier my belief that the art was deficient, and the case should be reversed.

8. The Chairman is willing to accept from the examining operation and from the Solicitor informal challenges to a decision or to the content thereof, usually assuming the EIC is

wrong and indicating that the decision should be changed. Thus, an unofficial record is created outside of the file, of which the appellant knows nothing and, of course, which the appellant therefore cannot rebut.

9. The Solicitor also has in the past taken an active role in the handling of an application in the examining operation, and then has participated, either directly or indirectly, in the deliberations of the Board panel. In one case that I know of, the Solicitor wrote the Board's opinion and it was forced upon the panel members by the Chairman. This means that one of the two parties to the case (the PTO) is represented before the panel in a secret session of which the other party (the appellant) is not even aware, and to which he cannot provide input.

18. In some cases, the Chairman, upon being appraised of a written and signed decision about to be mailed, has stopped the mailing, destroyed the decision, and constituted a new panel to reach a different result.

11. In other cases, upon the request of the Commissioner of the Solicitor, the Chairman has hand-picked a panel in a particular case in order to achieve a decision which the PTO desires, for whatever the reason.

12. In still other cases, the Chairman has expanded the panel with selected individuals, such as himself and the Vice-Chairman, or the Commissioner, in order to insure the result desired by the PTO.

13. We don't know what forces are at work behind the scenes deciding in which cases the PTO cannot take a chance on the independent judgment of the Board panels, and must intervene to insure a particular result. Perhaps this involves policy which the PTO wishes to set. However, the Board is bound to interpret the law of the CAFC in deciding issues of patentability, and thus should not be used as the vehicle for carrying out PTO policy. 14. Somehow, the Solicitor has been placed in the position of deciding which Board decisions will be published, and thus become precedent. Those that go against the behind-the-scenes policies the PTO has established, even though they are based upon our understanding of the CAFC rulings, are not published. Thus, the Board does not control its own precedent; it's in the hands of the attorney representing not the Board, but one of the two parties to our cases, the PTO.

15. I (and others) have been asked to speak before Bar Associations, but have been refused permission by the Chairman "because the Commissioner has a policy of not letting anyone speak except the Chairman or Vice-Chairman." I cannot understand why this policy exists if, in fact, it does exist. In addition, one of our rating factors includes "enhancement of...Bar understanding" of the Board by "instructional roles...among the

Bar and public groups." Therefore, we are not being permitted to increase our performance rating in this factor.

16. The mechanical EIC's have run out of work recently, in large part as a result of the Chairman giving hundreds of our so-called "easy" cases to the chemical EIC's two years ago, for the sole purpose of more quickly eliminating the total backlog, knowing full well that this would haunt us later. It should be borne in mind here that the chemical EIC's had plenty of cases then. It also is interesting to note that, to the best of our knowledge, the Chairman received a large award for our performance that year. Now, six of us have been assigned to other areas of the PTO for six months, to jobs which we do not want and for which we have little training and experience.

17. The Chairman's manner of management is one of abusiveness and disrespect toward all of us. Last week, when he failed to notify me of the details of my six-month assignment, I called the manager on my own. The Chairman called me into his office and, among other words, uttered the following, which is exemplary of his feelings toward us: "I'll decide when you should know something and what you should know. You people think you're independent operators here and you're not. I'm in charge and I'll tell you what to do." During my interview for the position five years ago, he continually stressed that he wanted "good soldiers" who would grind out the cases, not legal scholars.

18. The atmosphere that the Chairman and, I suppose, the PTO in general, has created at the Board is calculated to discourage the independent judicial thinking which the Board is obligated by law to practice. Rather than concentrate on full analysis and complete opinions, we are urged to just push them out. We are not trying to write a treatise on each decision, but merely to be allowed to decide for ourselves the extent to which each case must be analyzed and the depth to which the decision need reach in order for the examiner, the appellant and the public to get what it pays for.

19. Finally, my understanding of the function of the Board is that it is to fairly and independently judge issues of patentability in accordance with the applicable precedent. The members are well able to do this job. We should not have to work in an atmosphere poisoned by pressures which subvert this function. Nor should we be forced to operate under circumstances which many of us feel are contrary to accepted legal ethics and fair judicial practice, and which ultimately are a disservice to the public.




May 14, 1992

The Honorable Dennis DeConcini


ATTN: Janis Long

Patent, Copyrights & Trademark Subcommittee

on the Judiciary

327 Hart Senate Office Building Washington, D.C. 20510

Dear Mr. Chairman:

During the testimony I presented on May 12, 1992, at your oversight hearings of the U.S. Patent Office, you asked me to provide information about a case where a panel of the Board of Patent Appeals and Interferences was expanded to thirteen members allegedly to insure a decision sought by the Patent Office administration. The case was Ex Parte McGaughey 6 U.S.P.Q. 2nd 1344 (1988). (U.S.P.Q. is the U.S. Patent Quarterly.) I have been told that the case started out with a panel of three, and was subsequently expanded again and again until finally a total of thirteen members, including all of the management officials who were Examiners-in-Chief, were appointed to the Board.

It was originally my understanding that it was this case in which some of the Board members were threatened with removal for having issued a dissent. I was erroneously informed. The threats of firing occurred during consideration of a decision issued by the Trademark Trial and Appeal Board. This incident was related to the current examiners-in-chief during a luncheon speech to them by Mr. Jeffrey Samuels, the Assistant Commissioner for Trademarks. Mr. Samuels told of the Commissioner being upset about a dissent written by members of the Trademark Board, and his threats to fire those who had issued the dissent. He cautioned the examiners-in-chief on the Board of Patent Appeals and Interferences that the issuance of dissents by them could lead to similar results.

You asked whether the quota system on the number of decisions authored predated the passage of the Federal Employees Pay and Comparability Act (FEPCA) of 1990. I related that to the best of my knowledge it did not. I have subsequently learned that the quota system and the performance standards of examinersin-chief have been in existence for approximately six years. At the time it was implemented, the examiners-in-chief filed a group

The Honorable Dennis DeConcini

May 14, 1992
Page 2

grievance with the Department of Commerce alleging that it interfered with their judicial independence and that it was improper. The Department of Commerce denied their grievance by saying that it was a non-grievable matter, since it dealt with performance standards. The examiners-in-chief believed they had no further remedies. However, the enactment of the FEPCA in 1990 did cause the Patent Office to issue new performance quotas which were directly tied to the ability of the examiners-in-chief to achieve a particular pay level. In other words, failure to achieve these quotas set forth in the performance standards could result in an end to advancement in the seven pay steps implemented after FEPCA by the Department of Commerce. This then became a new item of concern to the examiners-in-chief. It was because of SEA's involvement in monitoring the establishment of senior level pay systems throughout the agencies that we became aware of the problems confronting examiners-in-chief at the U.S. Patent Office.

I request that this letter be included in the record to accompany my testimony in order to correct and clarify the answers I gave at the hearing.

GJS: shm


berry shaw General Counsel

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