Congress’ 2011 patent reform bill, the Leahy-Smith America Invents Act (AIA) allows any “person” to petition the U.S. Patent and Trademark Office (PTO) for a review of a previously issued patent. The PTO can then invalidate the patent if it determines that it should not have issued the patent in the first place. Does a government agency count as a “person” in this regard?
The question is currently before the U.S. Supreme Court in the case of Return Mail Inc. v. U.S. Postal Service. The issue involves a patent obtained by Return Mail Inc. in which bar codes are used to help process undeliverable mail. The post office wants to challenge that patent, and it would be much easier and cheaper to seek a post-issue review in an administrative process than to have to litigate the issue.
The problem is that, according to the Dictionary Act, the government is presumed not to be a “person” in federal law. That presumption can be overcome, however, with sufficient evidence.
Congress could have resolved the issue by writing the answer into the AIA, but instead it remained silent on the subject.
According to an analysis by SCOTUSblog, it is difficult to tell which way the justices will rule on this question. They had plenty of questions for both sides.
When questioning the lawyer representing Return Mail Inc., several justices questioned why Congress would have wanted to prevent government agencies from having access to the administrative proceeding. Would Congress have intentionally excluded the government from the reforms it was passing?
The justices weren’t willing to let the Postal Service off the hook, either. In fact, one suggested that there might be good reasons why government agencies would be excluded from the relief afforded by the AIA.
Justice Sonia Sotomayor painted a picture of a private citizen, such as the head of Return Mail, being thrust into a post-issuance review proceeding in which a government agency was the challenger. The PTO, would be in the position of picking the judges and even overruling them. Another government agency, the Postal Service, would be prosecuting the case. Wouldn’t the deck be stacked against the private citizen if the government had something to gain in the case?
Other justices argued that giving government agencies the same rights as a “person” should be done deliberately if it is to be effective. In other words, giving an agency personhood should not be the default position.
It may come down to the presumption in the Dictionary Act. Presumptions require evidence to overcome, and there may not be enough evidence here that Congress intended to confer personhood onto government agencies for the purposes of the AIA.