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    PATENTS: A Federal Agency Is Not a "Person" for Purposes of Review of the Validity of a Patent Under the Leahy-Smith Act

    Posted by Anne B. Hemenway on Wed, Dec 18, 2019 @ 10:12 AM

    The Lawletter Vol 44 No 6

    Anne Hemenway—Senior Attorney, National Legal Research Group

                In Return Mail, Inc. v. USPS, 139 S. Ct. 1853 (2019), the U.S. Supreme Court held that a federal agency is not considered a "person" for purposes of seeking review of the validity of a patent under the Leahy-Smith America Invents Act of 2011 ("AIA"), 35 U.S.C. §§ 1 et seq.  The AIA, enacted on September 16, 2011, changed the patent system from a first-to-invent to a first-inventor-to-file system.  The transition to a first-to-file system took place over a period of approximately 18 months.

                The AIA also created the Patent Trial and Appeal Board and established three types of administrative review proceedings before the Board.  See 35 U.S.C. § 6.  The reviews include an "inter partes review," a "post-grant review," and a "covered-business-method" ("CBM") review.  See id. §§ 311, 321.

                Under the post-issuance review provisions of the AIA, which became effective September 16, 2012, 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.  See id.  § 311(a).  In Return Mail, Return Mail, Inc., owned a patent on a way of processing undeliverable mail, and it asserted a patent infringement claim on the U.S. Postal Service ("USPS"), which later introduced a method to process undeliverable mail. USPS petitioned for a CBM review of the patent. Return Mail asserted, among other things, that USPS did not have standing to seek a post-issuance review.  The Federal Circuit held that a government agency, such as the USPS, was a "person" under the statute.

                The Supreme Court reversed, citing a "longstanding interpretive presumption" that the word "person" does not include the sovereign.  See 139 S. Ct. at 1861-62.  Thus, 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 the AIA administrative proceedings before the Patent Office.

    Topics: Anne B. Hemenway, patents, Leahy-Smith Act, first-inventor-to-file system

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