Tuesday, June 11, 2019

Supreme Court - Federal Government Can't Challenge Patent Validity in US Patent Office

In Return Mail v. U.S .Postal Service, the Supreme Court held the Federal Government cannot file petitions for inter partes review, post grant review, and covered business methods at the Patent Trial & Appeal Board (PTAB) under the American Invents Acts because the AIA statute does not define the term "person," a presumption arises a federal agency is not a "person" and the U.S. Postal Service failed to rebut that presumption.

Justice Breyer, joined by justices Ginsberg and Kagan, unsuccessfully argued legislative history, among other things, demonstrated Congress intends "person" to include Federal Agencies.

Due to the low volume of Government petitions for AIA trials (less than 20 petitions in 8 years) I don't expect this decision to impact many in the future, but it is favorable to patent owners given the invalidation risk at PTAB.

Copyright © 2019 Robert Moll. All rights reserved.