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July 6, 1992

Senator Dennis DeConcini


Subcommittee on Patents,

Copyrights and Trademarks
Committee on the Judiciary

SH-327 Hart Senate Office Bldg.
Washington, D.C. 20510-6275

Dear Senator DeConcini:

We appreciate your subcommittee considering the views of the Senior Executives Association during the Oversight hearings held on May 12, 1992.

In your letter of June 17, 1992, you forwarded two further questions for our consideration. Attached are our responses to those questions. We have broken the first question down into two parts, (la) and (lb). The second question contains our recommendation concerning the manner in which a member of the Board of Patent Appeals and Interferences could be subjected to a meaningful performance appraisal process.

Again, thank you for your consideration of our views. request that our responses be included in the hearing record.



Jerry Shaw
General Counsel


815 Connecticut Ave., N.W.
Suite 800

Washington, D.C. 20006


Question 1(a)

It is not

apparent why Congress did not provide the Commissioner with the right to appeal an adverse Board decision in


1927, when appeals from Board decisions to the Commissioner were However, it is apparent that since 1927, until the most recent actions by former Commissioner Manbeck, the Board of Appeals decided cases independently. Until recently, the Board provided independent review of adverse decisions of the Commissioner's delegates, viz., the patent examiners.' Failure to provide the Commissioner with the right to appeal may indicate that (1) Congress intended the Commissioner be bound by decisions of the Board, and (2) the Commissioner's influence on Board decisions is limited to his or her presence on a panel deciding an appeal, and now an interference, having only one vote. The Commissioner's memo to Examiners-in-Chief dated April 29, 1992, assumes that the Board is the alter ego or agent of the Commissioner, a position which directly conflicts with the views of the Court of Appeals for the Federal Circuit. The Commissioner's memo, contrary to statute, bootstraps one vote on a panel to all of the votes.

The lack of the Commissioner's right of appeal has not heretofore served as a basis for concluding that the Commissioner

1 An example of the Board's decisional independence is illustrated in Ex parte Osmond, 191 USPQ 340 (Bd. App. 1976). In Osmond, the Board overturned the Commissioner's determination that Defensive Publications were available as prior art as of their filing dates. The Board held that such determination was inconsistent with the applicable statutes and, thus, was legally

has veto power over a decision of a duly designated panel of the Board, that the Commissioner may predetermine the outcome of an appeal or interference, or that the Commissioner may designate a Board panel by ascertaining that the selected panel members agree with the Commissioner's predetermined outcome. If anything, elimination of direct appeals of Board decisions to the Commissioner in 1927 highlights the independence of the Board. Congress did not intend that Board decisions should be manipulated, vetoed or overruled on the basis of the Commissioner's view of the

relevant statutes.

Question 1(b)

In those rare instances that a Commissioner believes that the Board's reversal of an examiner's decision raises policy issues that should be further reviewed, such review should be directly with the courts. Review should not lie with the Commissioner, who created and has a direct interest in upholding the questioned policy. If the Commissioner has veto power over Board decisions, the question arises why an applicant should spend the resources on an appeal to the Board only to have a favorable decision vetoed. Their resources could be better utilized in seeking Administration or other political influence of the Commissioner in order to ensure the result sought by the applicant.

Providing the Commissioner with the right to appeal adverse Board decisions, in the same manner other agency heads can appeal

from adverse decisions of the Boards of Contract Appeals, would provide an orderly, timely, independent court review and resolution of the issues deemed important by the Commissioner. That procedure also would assure an applicant his or her due process rights. the Commissioner is provided the right to appeal adverse Board decisions, the Commissioner, Deputy Commissioner, and the Assistant Commissioners should be removed from the Board.


Question 2

The Examiners-in-Chief do not believe that review of their performance by management officials, such as the current Chairman and Vice Chairman who are members of the Senior Executive Service, should include subjective factors. Subjective determinations necessarily amount to subjective review of the actual decision made in an individual appeal or interference.

That type of review has individuals to make an

a chilling effect on the ability of independent judgment on all matters before him or her, as required by the relevant performance appraisal plan.

The major activities of an Examiner-in-Chief assigned to write the opinion of the panel, rated under the present Performance Appraisal Plan, are:

1. Making a complete study of all technical and legal aspects of the assigned appeal or interference. Conferring with other panel members as appropriate. Hearing oral argument in a case where a hearing is requested.





Reviewing and analyzing the arguments and evidence in the assigned appeal or interference.

Ascertaining the applicable legal principles.


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Conducting any needed legal and/or technical research. Convening the panel for consideration of the legal and factual issues. After which,

The Examiner-in-Chief prepares a well reasoned written opinion reflecting the decision and views of at least a majority of the assigned panel.

The performance of any one of these activities can only be evaluated by a person who served on the individual panel. This is also the only fair manner in which the other major activity, panel participation when not writing the opinion, can be reviewed. The present system, where management officials base their performance review of Examiners-in-Chief on a relatively few cases on which they served as a panel member and/or by reading mailed decisions without having any personal knowledge of the amount and quality of effort and input by any one panel member is unworkable. The present system has elevated the actual count of the number of opinions authored to be the only activity that is effectively rated.

The opinion writing quota system has been in existence for approximately six years. Nevertheless, to this day, the rating officials are unable to provide an objective definition of a "jumbo case" or objective criteria for determining whether a case is unduly complex. The Examiners-in-Chief do not believe that jumbo cases can be fairly defined. Cases having small records can present unduly difficult issues to resolve. Conversely, cases having thick records can at times be decided in a straightforward The ease or difficulty in reaching a decision in a particular case depends on many factors, e.g., the number and


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