Takeaway: Governmental Agencies cannot challenge patents under the American Invents Act post-issuance review procedures.
In Return Mail v. United States Postal Service, the Supreme Court of the United States held that Federal government agencies, such as the United States Postal Service in this case, are not eligible to challenge existing patents under AIA post-issuance review procedures.
This holding followed from the decision to apply the “longstanding interpretive presumption that the term ‘person’ does not include the sovereign.”
Since the Leahy-Smith America Invents Act (AIA) of 2011 does not include an express definition of the term “person,” this case relied on the justices’ assessment of whether there was sufficient statutory intent to include government agencies in the definition.
Citing the similarities between governmental and non-governmental patent holders, including their exposure to civil liability, the dissenting justices argued that it made little sense for Congress to have intended to limit the government’s access to the AIA proceedings.
Ultimately, the majority found that the differences between governmental and non-governmental patent holders were significant enough to permit Congress to reasonably treat them differently under the statute.
Finding that there was not sufficient reason to use a definition of ‘person’ that included government agencies, the Supreme Court found that government cannot utilize the post-issuance procedures established by the AIA.