[Congressional Record Volume 154, Number 127 (Tuesday, July 29, 2008)]
[House]
[Pages H7233-H7235]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




        PROVIDING FOR PATENT AND TRADEMARK JUDICIAL APPOINTMENTS

  Mr. COHEN. Mr. Speaker, I move to suspend the rules and pass the 
Senate bill (S. 3295) to amend title 35, United States Code, and the 
Trademark Act of 1946 to provide that the Secretary of Commerce, in 
consultation with the Director of the United States Patent and 
Trademark Office, shall appoint administrative patent judges and 
administrative trademark judges, and for other purposes.
  The Clerk read the title of the Senate bill.
  The text of the Senate bill is as follows:

                                S. 3295

       Be it enacted by the Senate and House of Representatives of 
     the United States of America in Congress assembled,

     SECTION 1. APPOINTMENT OF ADMINISTRATIVE PATENT JUDGES AND 
                   ADMINISTRATIVE TRADEMARK JUDGES.

       (a) Administrative Patent Judges.--Section 6 of title 35, 
     United States Code, is amended--
       (1) in subsection (a)--
       (A) in the second sentence, by striking ``Deputy 
     Commissioner'' and inserting ``Deputy Director''; and
       (B) in the last sentence, by striking ``Director'' and 
     inserting ``Secretary of Commerce, in consultation with the 
     Director''; and
       (C) by adding at the end the following:
       ``(c) Authority of the Secretary.--The Secretary of 
     Commerce may, in his or her discretion, deem the appointment 
     of an administrative patent judge who, before the date of the 
     enactment of this subsection, held office pursuant to an 
     appointment by the Director to take effect on the date on 
     which the Director initially appointed the administrative 
     patent judge.
       ``(d) Defense to Challenge of Appointment.--It shall be a 
     defense to a challenge to the appointment of an 
     administrative patent

[[Page H7234]]

     judge on the basis of the judge's having been originally 
     appointed by the Director that the administrative patent 
     judge so appointed was acting as a de facto officer.''.
       (b) Administrative Trademark Judges.--Section 17 of the Act 
     entitled ``An Act to provide for the registration and 
     protection of trademarks used in commerce, to carry out the 
     provisions of certain international conventions, and for 
     other purposes'', approved July 5, 1946 (commonly referred to 
     as the ``Trademark Act of 1946''; 15 U.S.C. 1067), is 
     amended--
       (1) in subsection (b)--
       (A) by inserting ``Deputy Director of the United States 
     Patent and Trademark Office'', after ``Director,''; and
       (B) by striking ``appointed by the Director'' and inserting 
     ``appointed by the Secretary of Commerce, in consultation 
     with the Director''; and
       (2) by adding at the end the following:
       ``(c) Authority of the Secretary.--The Secretary of 
     Commerce may, in his or her discretion, deem the appointment 
     of an administrative trademark judge who, before the date of 
     the enactment of this subsection, held office pursuant to an 
     appointment by the Director to take effect on the date on 
     which the Director initially appointed the administrative 
     trademark judge.
       ``(d) Defense to Challenge of Appointment.--It shall be a 
     defense to a challenge to the appointment of an 
     administrative trademark judge on the basis of the judge's 
     having been originally appointed by the Director that the 
     administrative trademark judge so appointed was acting as a 
     de facto officer.''.

  The SPEAKER pro tempore. Pursuant to the rule, the gentleman from 
Tennessee (Mr. Cohen) and the gentleman from Iowa (Mr. King) each will 
control 20 minutes.
  The Chair recognizes the gentleman from Tennessee.


                             General Leave

  Mr. COHEN. Mr. Speaker, I ask unanimous consent that all Members have 
5 legislative days to revise and extend their remarks and include 
extraneous material on the bill under consideration.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from Tennessee?
  There was no objection.
  Mr. COHEN. Mr. Speaker, I yield to myself such time as I may consume.
  Intellectual property accounts for billions of dollars in our 
Nation's economy. The success of this industry largely depends on the 
protections afforded them by the United States Patent and Trademark 
Office and the decisions made by administrative patent and trademark 
judges.
  In 1999, the process by which administrative patent and trademark 
judges are appointed was modified as part of the American Inventors 
Protection Act. That act, which provided greater accountability and 
efficiencies at the Patent and Trademark Office, transferred the power 
to appoint these judges from the Secretary of Commerce to the Director 
of the U.S. PTO.
  Recently, however, concerns have been raised as to the 
constitutionality of the Director making such appointments. Already, at 
least two U.S. PTO decisions have been challenged on this basis.
  We firmly believe that appointments made by the Director are 
constitutional. Nevertheless, in order to remove any doubts, the House 
and Senate has reached identical bills to respond to these concerns. 
H.R. 6362, sponsored by Howard Berman, John Conyers, Lamar Smith, and 
Howard Coble, and S. 3295, sponsored by Patrick Leahy and Arlen 
Specter, make three changes to the administrative judge appointments 
process. Today, we take up the Senate bill, which passed the Senate 
last week by unanimous consent.
  First, S. 3295 restores the statutory appointment authority to the 
Secretary of Commerce.
  Second, it allows the Secretary to retroactively appoint 
administrative judges who have been acting as de facto judges. The 
appointments would be effective as of the date the judges were 
originally appointed by the Patent and Trademark Office Director.
  And third, the bill provides a de facto officer defense to counter 
challenges to the United States Patent and Trademark Office decisions 
made by these administrative judges prior to their retroactive 
appointment.
  This legislation is intended to ensure certainty in the market and to 
end unnecessary litigation and the consumption of judicial resources on 
an issue over which there should be no dispute.
  But should these judgeships be found to be unconstitutional and not 
de facto officers, the courts should remand the affected cases back to 
the U.S. PTO panels so that they may dealt with expeditiously.
  Given the importance of intellectual property to our Nation's 
economy, years of uncertainty as the courts determine the 
constitutionality of the appointments process would be devastating.
  The sponsors of H.R. 6362 and S. 3295 have provided a way through 
this uncertainty. Accordingly, I urge my colleagues to support this 
critical legislation.
  I reserve the balance of my time.
  Mr. KING of Iowa. Mr. Speaker, I yield myself so much time as I may 
consume. I rise in support of S. 3295, and I urge the House to adopt 
the bill.
  Mr. Speaker, 9 years ago Congress enacted the American Inventors 
Protection Act as part of a larger intellectual property and 
telecommunications reform measure. Among its many provisions, this law 
confers a measure of autonomy on the Patent and Trademark Office. At 
the time, inventors, trademark owners, and Members of Congress believed 
the agency would function more efficiently if it were allowed greater 
operational freedom. In fact, some of the earliest drafts of the 
legislation, dating back to the early and mid-1990s, sought to 
transform the Patent and Trademark Office into a public corporation.
  Consistent with this goal, the 1999 law enhances the authority of the 
Patent and Trademark Office Director to oversee agency affairs. This 
includes empowering the Director, not the Secretary of Commerce, to 
appoint administrative law judges serving on the Board of Patent 
Appeals and Interferences, as well as the Trademark Trial and Appeal 
Board.
  Unfortunately, this small and seemingly innocuous change may very 
well violate an obscure provision of the United States Constitution, 
the so-called ``appointments clause.'' That's article II, section 2, 
which enumerates the powers of the President, including the right to 
appoint various judges, ministers, and other government officials. The 
last portion of the clause states that ``Congress may . . . vest the 
appointment of such inferior officers, as they think proper, in the 
President alone, in the courts of law, or in the heads of 
departments.''
  In other words, a straightforward reading of article II, section 2, 
which I strongly endorse, suggests the 1999 authority that Congress 
bestowed on the Patent and Trademark Office Director to appoint 
administrative law judges is unconstitutional, inconsistent with 
article II, section 2. Instead, this right is more properly reserved 
for the head of the relevant department, the Secretary of Commerce, 
because the Patent and Trademark Office remains an agency within 
Commerce.
  But what does this mean as a practical matter? Why it is a problem? 
The answer lies in the number of judges appointed since the 1999 law 
took effect.

                              {time}  1615

  Of the 81 judges serving on the two boards, 50 were appointed by the 
Patent and Trademark Office Director under his new authority. Those 
judges have rendered hundreds of decisions, all of which may be 
constitutionally suspect if challenged. And that is already happening 
in one case, the Translogic Technologies versus Dudas case, which is 
pending before the Supreme Court.
  This body knows how important intellectual property is to our 
national economy. With all the other problems plaguing the patent 
system, the last thing we need is a crisis that reopens settled legal 
disputes. This isn't fair to the litigants, especially those who won, 
and it places rights and fair access to inventions in limbo.
  The solution we must adopt is S. 3295. The bill transfers the 
authority to appoint administrative law judges from the Patent and 
Trademark Office Director to the Secretary of Commerce and makes it 
consistent with article II, section 2 of the Constitution.
  The legislation also adopts two features developed by the Patent and 
Trademark Office and the Department of Justice. One empowers the 
Secretary to ``deem'' or ratify all the appointments made by the PTO 
Director under the 1999 law. The other creates a ``de facto officer'' 
defense to any challenge made to the appointment of a patent or 
trademark administrative law judge.

[[Page H7235]]

Pursuant to the defense, the acts of a public officer performed under 
color of authority are considered valid and immune from collateral 
attack. Born of policy and necessity, the defense protects the 
interests and reasonable expectations of the public who must rely on 
the presumptively valid acts of public officials.
  In closing, we must enact S. 3295 much sooner rather than later to 
avert a potential litigation crisis that would prove wasteful, 
unnecessary, and unfair.
  S. 3295 does provide a measure of immunity. Congress clearly has the 
authority to do so. And today, we have the responsibility to quickly 
move S. 3295.
  Mr. Speaker, I urge adoption and yield back the balance of my time.
  Mr. COHEN. Mr. Speaker, the bill also makes a technical change to 
insert the term ``deputy director,'' the term in current use, in place 
of ``deputy commissioner,'' an outdated term mistakenly used in the 
2002 bill. Because related terms no longer appear in the underlying 
statute, this change could not be properly executed in the 2002 bill.
  Mr. Speaker, I yield back the balance of my time.
  The SPEAKER pro tempore. The question is on the motion offered by the 
gentleman from Tennessee (Mr. Cohen) that the House suspend the rules 
and pass the Senate bill, S. 3295.
  The question was taken.
  The SPEAKER pro tempore. In the opinion of the Chair, two-thirds 
being in the affirmative, the ayes have it.
  Mr. KING of Iowa. Mr. Speaker, I object to the vote on the ground 
that a quorum is not present and make the point of order that a quorum 
is not present.
  The SPEAKER pro tempore. Pursuant to clause 8 of rule XX and the 
Chair's prior announcement, further proceedings on this motion will be 
postponed.
  The point of no quorum is considered withdrawn.

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