The US Supreme Court is considering a whether the federal government may institute post-grant review proceedings at the US Patent Trial and Appeal Board. Womble Bond Dickinson attorneys Kean DeCarlo and Flynt Strean both offered comments on Return Mail v. United States Postal Service to IPWatchdog.

Strean tells IPWatchdog, “Noting that the government is immune from federal district court and ITC patent litigation suits (the only forum for patent infringement claims against the government being the Court of Federal Claims and the AIA’s estoppel provisions do not mention this forum), Petitioners argue that by considering the government a “person” for purposes of post-grant challenges offered by the AIA, the government has the uniquely unfair advantage of having access to the AIA’s new patent challenging tools without the estoppel effects meant to balance them. The government argues that other provisions of the AIA consider the government a person, that the government has long participated in the patent system on the same terms as private entities, and that the government is sufficiently capable of identifying invalid patents. Based on a majority of amicus briefs filed with the Court, however, many practitioners, patent owners, and patent law professors side with Petitioners and consider the government persona non grata when it comes to review proceedings under the AIA.”

DeCarlo said, “The justices’ questions appear to indicate a divided court. Some justices suggested that Congress could not have intended to exclude the government from the cost-efficient benefits of post-grant review, while other justices appeared to be troubled by the potential unfair leverage against a private citizen by the combination of USPTO, acting as a judge and jury, and another federal agency, acting as a prosecutor. Return Mail’s suggestion that an affected federal agency potential recourse if the agency is not considered a “person” under the AIA of contacting the USPTO ex parte directly so that the USPTO director can initiate the administrative patent review was met with skepticism by several justices. The justices may have tipped their hand in the latter stages of the arguments, when they appeared to focus on the lack of any apparent indication of congressional intent with respect to the question of whether or not the government is a “person” under the AIA.

“In view of the admission that federal agencies had combined to submit only 20 requests for post-grant review since the enactment of the AIA, it is not unreasonable for the justices of the Court to rely on a presumption that the government is not a “person” under the post-grant provisions of the AIA in reaching their decision. This action would force Congress to amend the AIA if congressional intent was for governmental agencies to be considered a “person” for these statutory post-grant provisions. Further, such a presumption against agency “personhood” would ensure that federal agencies could not have the benefit of participating in post-grant proceedings without the concomitant burden of estoppel that acts as an important quid pro quo for the right to participate in the proceedings by non-governmental ‘persons.’”

Click here to read “Return Mail Reaction: Patent Bar Sampling Narrowly Favors Finding for Petitioner” at IPWatchdog.