• Paul Peter Nicolai

Government Agencies Cannot Seek Patent Review

In 2011 Congress passed the America Invents Act (“AIA”). It changed the patent system from a first-to-invent to a first-inventor-to-file system. AIA also created the Patent Trial and Appeal Board and created three types of administrative review proceedings before it. Under the AIA post-issuance review provisions, a person other than the patent owner may petition for a review and cancellation of a patent on the grounds that the invention lacks novelty in light of patents or printed publications existing at the time of the patent application

A company owned a patent on a way of processing undeliverable mail. It asserted a patent infringement claim on the U.S. Postal Service (“USPS”) which had later introduced a method to process undeliverable mail. USPS petitioned for a review of the patent as a way of knocking out the infringement claim. The company said USPS could not seek post-issuance review. The Federal Circuit held that a government agency was a "person" under the statute and could ask for a review.

The US Supreme Court reversed, citing a longstanding interpretive presumption that the word person does not include the sovereign. The Court said that absent showing an affirmative intention by Congress to include the Government as a party or person in any post-issuance review process, USPS was precluded from initiating administrative proceedings before the Patent Office.

WHY THIS IS IMPORTANT… This decision removes government agencies from the class of those who are able to contest patent validity through post-issuance review.

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