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.
