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The Federal Government Is Not A Person

  • Jun 14 2019

By: Mark J. Cohen, Ph. D

The Supreme Court in a decision in Return Mail Inc. v. U.S. Postal Service et al, case number 17-1594 in the U.S Supreme Court, ruled on June 10, 2019 that a federal government agency is not a person within the meaning of the Leahy-Smith America Invents Act (“AIA”). Among its many provisions, the AIA established three types of administrative review proceedings for any person to challenge the validity of a U.S. patent before the Patent Trial and Appeal Board (“PTAB”): inter partes review challenging the validity of a patent during the patent term nine months after issuance thereof based solely on written publications or patents as prior art; post-grant review; and covered business method review, the latter two based on any ground of invalidity if brought before the PTAB within nine months of the issuance of the patent. The advantage of these proceedings is that the inter partes action before the PTAB is less expensive than litigation in the courts; a decision on the issue of validity is rendered more quickly than in the courts; and there is a lower standard of proof is required to invalidate a patent in these proceedings. By its decision, the Supreme Court barred federal agencies from challenging patents in AIA reviews; consequently, federal agencies cannot take advantage of these provisions of the AIA.

This decision does not bar the federal agency from filing a Declaratory Judgment Action in federal courts. In addition, at the present time, federal agencies can challenge patents in ex parte reexaminations, in which a person can bring prior art to the attention of the USPTO, which can, based on the prior art brought to its attention, reexamine the patent’s validity. But, this is purely an ex parte action; the challenger can follow the reexamination on PAIR, but it cannot participate in the proceeding. It is to be noted that the Supreme Court did not address the issue of whether a federal agency is a person within the meaning of the statute to challenge patents in ex parte reexaminations, even though the Supreme Court acknowledged in its opinion that in the past, the USPTO has allowed government agencies to file ex parte reexaminations.

This decision by the Supreme Court probably will not have any impact on most patent owners, unless the federal agency is infringing a patent of the patent owner. In fact, the federal government has filed very few AIA petitions before this decision was rendered. In any event, this decision in which federal agencies are prohibited from bringing AIA petitions to the USPTO avoids any appearance of impropriety in cases where the PTAB holds that a patent, which is not owned by the U.S. government, is invalid.

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