220px-Wingmanass=”alignleft size-full wp-image-4165″ title=”220px-Wingman” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/10/220px-Wingman.jpg” alt=”220px-Wingman” width=”220″ height=”177″ />Whether in a social or tactical environment, everyone knows the importance of a good wingman.  Yet, the Board of Appeals and Patent Interferences (“BPAI”) has suffered from the absence of its wingman in several recent appeals to the Federal Circuit.

In Rolls-Royce PLC v. United Technologies Corp. (here), the Federal Circuit applied a non-traditional test in its interference-in-fact analysis, and in Agilent Technologies Inc. v. Affymetrix Inc. (see past blog post here), the court imposed a very controversial claim interpretation standard for copied claims.  In a rare form of collateral damage, the Agilent decision led the BPAI to rescind one of its fundamental rules, 37 C.F.R. 41.200(b).

Would Solicitor participation in these cases have protected the institutional interests of the BPAI?  The answer is not clear.  However, absent Solicitor participation, the BPAI’s record will be left to speak for itself.

Fortuitously, 35 U.S.C. 143 requires the Solicitors Office to participate in appeals to the Federal Circuit taken by applicants, patent owners (ex parte and inter partes reexamination), and third parties (inter partes reexamination). 

Appeals taken by applicants and patent owners in ex parte reexamination are as old as the hills.  However, Safoco was the first appeal of an inter partes reexamination to reach the Federal  Circuit.  Safoco confirmed (here) that the Solicitor’s Office will participate in inter partes reexamination appeals, although not as a named party.   In interference appeals, the Solicitor’s Office has discretion whether to participate as an amicus.  However, the Solicitor has seldom participated as an amicus in an appeal from the decision of the BPAI in an interference — although he has occasionally been ordered by the court to do so in cases where the winning party below chose not to defend its win on appeal.

Interestingly, if S.515 is enacted, the Solicitor’s discretion to intervene would extend to inter partes reexam, derivation cases, and inter partes or post grant review.  Unless the Solicitor’s Office is motivated to serve as wingman, the renamed Patent Trial and Appeal Board’s interests will be alone and vulnerable.