Skills II Exercise:
Alfred Algorithm v. Commissioner, U.S. Patent
and Trademark Office
Tom Field Spring 1992
The Decision Below
[District Court for the District of New Hampshire]
Ira Scible, J.
This is a petition by Alfred Algorithm, a resident
of New Hampshire, seeking review of denied access to the "Examination for
Registration to Practice in Patent Cases Before the U.S. Patent and Trademark
Office." The examination is administered by the Commissioner of the Patent
and Trademark Office under authority of 35 U.S.C. § 31 and 5 U.S.C.
§ 500.
I. Undisputed Facts
Petitioner has a bachelor's degree in computer science
from the Impressive Institute of Technology. Following two years of successful
entrepreneurial activity in the software industry, he enrolled at the Fisher
Price Law Center. Following completion of requirements for the J.D., including
several elective hours of patent and related law, he sat for and passed
the New Hampshire bar examination -- and was duly admitted. He has clerked
for two intellectual property firms and is now employed by a third; supervising
attorneys aver that he performs high quality work on patent applications.
After making inquiry regarding the patent exam, petitioner received
a brochure entitled "General Requirements for Admission to the Examination...." [Portions appear as an appendix.] It lists areas in which a bachelor's
degree qualifies the holder to sit.[1]
Unfortunately, while the list includes "computer engineering," it does
not include computer science. Nor does petitioner satisfy any alternative
for showing technical proficiency insofar as he aggregates only 35 semester
hours of qualifying course work. Ultimately, petitioner received a final
decision denying him permission to sit.
II. Jurisdiction
Respondent urges that this court lacks jurisdiction
over this controversy because review is, under 35 U.S.C. § 32, exclusively
in the District Court for the District of Columbia. Several decisions of
that district have predicated similar review on that section. However,
the issue was neither raised nor explicitly addressed. Moreover, the decisions
of that circuit are not binding here, and such a reading is at odds with
the plain meaning of § 32. It concerns decisions suspending or excluding
persons from
further practice before the PTO. Since petitioner has
never practiced before it, I conclude that this court has jurisdiction
under 28 U.S.C. § 1331 to review, per the Administrative Procedure
Act,[2] a
decision of the PTO denying access in the first instance.
III. Review on the Merits
It is urged that the PTO decision must be sustained
either because it is unreviewable under 5 U.S.C. § 701(a)(2) or because
it is supportable under the standard of review set forth in § 706(2)(A).
The first argument fails because exceptions from the strong presumption
in favor of judicial review of adverse administrative action are granted
only in the most compelling circumstances, ones not present here.[3] I do agree that relief should be granted only if
the administrative action being reviewed is capricious and arbitrary and/or
shows an abuse of discretion. Yet, under that admittedly deferential standard,
the petitioner should not have been refused permission to take the exam.
First, while differences between typical computer
"science" and "engineering" degrees have been urged, under these circumstances
those differences do not support disparate treatment of respective holders
of the degrees. Nor does this court see any rational basis for requiring
40 semester hours under PTO "option 4" when 24-30 hours would suffice under
options 1-3 (Appx., at 2).
Second, while some decisions of the Supreme Court
cast doubt on the patentability of software, the Commissioner admits that
software is nevertheless at the heart of thousands of patents granted annually.
There is no doubt that petitioner can prosecute such cases.
Third, petitioner has substantial professional obligations
as an attorney. This should give rise to a presumption that he will not
prosecute cases beyond his competence. There is nothing in the record to
rebut it. Why would petitioner be more apt to prosecute an application
involving recombinant DNA than would, e.g., a patent agent with
B.S. in biology to prosecute one in computer science?
Any of these points, alone, compels granting the
relief sought.
IV. Relief
Under authority of 5 U.S.C. § 706(1), the Commissioner is ordered
to admit petitioner to the next regularly scheduled patent examination.
The Commissioner has filed timely notice of appeal to the 1st Circuit.
He urges that:
(1) jurisdiction for this appeal resides in the Court of Appeals for
the Federal Circuit under 28 U.S.C. 1295 and that it should be transferred;
and, failing that,
(2) the lower court should be reversed for lack of jurisdiction; and,
failing that,
(3) the lower court should be reversed on the merits insofar as his
actions were neither capricious and arbitrary nor an abuse of discretion;
and, failing that,
(4) it was improper for the lower court to order the Commissioner to
permit petitioner to sit -- rather he should have remanded for
further action.
[1] Under authority of 37 C.F.R. § 10.7(a)(1)(ii), an applicant must have "legal, scientific, and technical qualifications necessary to enable him or her to render applicants for patents valuable service."
[2] 5 U.S.C. §§ 701-706.
[3]
Citizens to Preserve Overton Park v. Volpe, 401 U.S. 402 (1971).
[*] For briefing and argument, issues 1 and 2 will be paired; likewise, issues 3 and 4.