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Is the Government is a ‘Person’? NYIPLA tells SCOTUS it depends

Is the Government is a

On Monday, December 17, 2018, the New York Mental Property Affiliation (“NYIPLA”) filed an amicus temporary in help of neither celebration in Return Mail, Inc. v. United States Postal Service, No. 17-1594 (U.S.).

Within the proceedings under, the Patent Trial and Attraction Board (“PTAB”) issued a remaining written choice in a Coated Enterprise Technique patent evaluation (“CBM”) continuing instituted based mostly on a petition by the U.S. Postal Service (“USPS”), invalidating sure claims of a patent owned (and asserted within the U.S. Courtroom of Federal Claims) by Return Mail, Inc.  USPS is a “authorities entity” as acknowledged in United States Postal Serv. v. Flamingo Indus. (USA) Ltd., 540 U.S. 736, 748 (2004).  The U.S. Courtroom of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the PTAB’s holding that USPS has standing to file a petition to institute a CBM continuing.

The U.S. Supreme Courtroom granted Return Mail’s petition for a writ of certiorari on the query of whether or not the federal government is a “individual” who might petition to institute evaluation proceedings underneath the AIA.

Whereas the NYIPLA took no place as to the last word deserves of Petitioner Return Mail’s underlying place, i.e., whether or not the federal government is a “individual” who might petition to institute a CBM continuing beneath AIA § 18(a)(1)(B),  the NYIPLA argued that it strongly believes that the Courtroom ought to rigorously think about the potential implications of deciphering “individual” in Title 35 of the U.S. Code (“Patent Act”) and the AIA as together with or excluding the federal government usually, after which challenge solely a slender holding on the scope of “individual” beneath AIA § 18(a)(1)(B) and, if in any respect, underneath 35 U.S.C. §§ 311(a) and 321(a).

In its temporary, the NYIPLA argued that whereas the overall rule is that “individual” ought to be interpreted to exclude a sovereign, that rule is versatile and have to be adjusted to the circumstances of the actual statute.  United States v. Cooper Corp., 312 U.S. 600, 604-05 (1941).  Within the context of the Patent Act, using the time period “individual” is inconsistent and, consequently, the time period have to be outlined within the context of the actual part by which it’s used.  Reliance upon the overall definitions is inappropriate in mild of how the definition of “individual,” vis-a-vis governmental entities, features inside the context of the Patent Act.

The NYIPLA additionally urged that, regardless of the broad wording of the query introduced, the holding on this case be expressly restricted to construing “individual” for functions of CBM proceedings beneath Part 18 of the AIA, leaving the query for IPRs and PGRs open for determination on one other day in a factually extra applicable car.

In its temporary, the NYIPLA additionally identified that previous to Congress’ enactment of the AIA, the U.S. Patent and Trademark Workplace’s follow, as mirrored within the Guide of Patent Analyzing Process, was that “individuals” who might request ex parteand inter partesreexaminations included governmental entities.  The legislative context referring to creation of post-issuance patent assessment proceedings and the PTO’s longstanding interpretation of “individual” to incorporate the governmental entities for functions of ex parteandinter partesreexaminations collectively help the interpretation that the federal government is a “individual” who might petition to institute IPR and PGR proceedings beneath the Patent Act.  Nevertheless, the context of CBM proceedings is just not the identical and should result in a unique conclusion.

Though the NYIPLA took no place on the deserves of this dispute, it urged the Courtroom to construe the which means of “individual” within the AIA based mostly on the context of every particular provision by which it’s used, and consonant with the famous inner inconsistency inside the Patent Act, and to keep away from any broad pronouncement on the which means of “individual” as usually used within the Patent Act, or in any other case.


The followings are excerpts on the interior inconsistency of using “individual” all through the Patent Act taken from the amicus temporary.

I. There isn’t a international definition of “individual” within the Patent Act or the AIA

A evaluate of using the time period “individual” all through Title 35 of the U.S. Code and the AIA displays the inescapable conclusion that “individual” can’t have a worldwide definition within the Patent Act, however have to be tied to the precise language of the related provision of the Patent Act.  Thus, this Part analyzes the varied situations by which the time period “individual” is used within the Patent Act to exhibit that there isn’t any single constant use that may mirror whether or not a authorities entity just like the USPS must be thought-about a “individual” for function of 35 U.S.C. § 311(a), 35 U.S.C. § 321(a) and AIA § 18(a)(1)(B).

A. Implications of Deciphering “Individual” to Embrace the Authorities

Some provisions of the Patent Act wouldn’t makeany sense if they’re construed as requiring “individual” to incorporate a governmental entity.

For instance, Sections three(a)(1) (figuring out who may be the “Director”) and 6(a) (figuring out who might be an “administrative patent decide”) use the time period “individual” to specify a person and never an entity (authorities or in any other case):

The Director shall be a individual who has knowledgeable background and expertise in patent or trademark regulation.

35 U.S.C. § three(a)(1).

The executive patent judges shall be individuals of competent authorized information and scientific potential who’re appointed by the Secretary, in session with the Director.

35 U.S.C. § 6(a).

In fact, a “individual” or “individuals” in each of those sections might embrace a person in a authorities workplace appearing in an official capability.

Different provisions, discussing inventors, likewise recommend that “individual” or “individuals” as used within the Patent Act on this context determine a person who’s an inventor and to not an entity (authorities or in any other case):

When an invention is made by two or extra individuals collectively, they shall apply for patent collectively and every make the required oath [that specifies the individuals who conceive and reduce to practice the invention]besides as in any other case offered on this title.

35 U.S.C. § 116(a).

Every time via error a individual is known as in an software for patent because the inventor, or by means of an error an inventor shouldn’t be named in an software, the Director might allow the appliance to be amended accordingly, underneath such phrases as he prescribes.

35 U.S.C. § 116(c).

Each time by means of error a individual is known as in an issued patent because the inventor, or by means of error an inventor just isn’t named in an issued patent, the Director might, on software of all of the events and assignees, with proof of the details and such different necessities as could also be imposed, concern a certificates correcting such error.

35 U.S.C. § 256(a).

On this context, a “individual” appears to be the person who conceived the invention, and never an entity (such because the applicant or assignee).  In fact, since Federal businesses might apply for patents on innovations[1] made by people working for the company, such “individuals” might embrace an individual in a authorities workplace.

Equally, in Part 201(c), “contractor” is outlined to incorporate “any individual,” which is distinguished from, and subsequently is recognized to be totally different from, a “small enterprise agency” or “nonprofit group”:

The time period “contractor” means any individualsmall enterprise agency, or nonprofit group that may be a get together to a funding settlement.

35 U.S.C. § 201(c).  Thus, on this context, a “individual” appears to be a person, and never an entity (e.g., small enterprise agency, or nonprofit group).  Therefore, right here, “individual” is also distinct from, and doesn’t seem to incorporate, a authorities entity.

Additional, Part 211 discusses “individual” in a fashion that may be inconsistent with together with a authorities entity:

Nothing on this chapter shall be deemed to convey to any individual immunity from civil or legal legal responsibility, or to create any defenses to actions, beneath any antitrust regulation.

35 U.S.C. § 211.  This part means that “individual” wouldn’t want to incorporate authorities entities, since such entities wouldn’t want immunity from civil or felony legal responsibility.  Nevertheless, “individual” might embrace a person working for the federal government, who may have such immunity.

 Thus, in every of those situations, “individual” is used within the Patent Act in a fashion that may be inconsistent with defining it to incorporate a authorities entity however might in at the very least some situations embrace a person employed by the federal government, appearing in his or her official capability.

B. Implications of Deciphering “Individual” to Exclude the Authorities

Different provisions of the Patent Act would result in weird outcomes if “individual” have been universally construed to exclude authorities entities.

For instance, Part 207(a)(1) supplies that a Federal company can apply for, get hold of, keep and personal patents (seenote 1supra).  Accordingly, it might make no sense for functions of Part 102, which defines what’s prior artwork and what might be excluded from prior artwork, to undertake a development of “individual” to exclude the federal government.  Part 102, partially, reads as follows:

(a) A individual shall be entitled to a patent until—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or in any other case out there to the general public earlier than the efficient submitting date of the claimed invention; or

(2) the claimed invention was described in a patent issued underneath part 151, or in an software for patent revealed or deemed revealed beneath part 122(b), during which the patent or software, because the case could also be, names one other inventor and was successfully filed earlier than the efficient submitting date of the claimed invention.

(b)(2)(C) A disclosure shall not be prior artwork to a claimed invention underneath subsection (a)(2) if . . . the subject material disclosed and the claimed invention, not later than the efficient submitting date of the claimed invention, have been owned by the identical individual or topic to an obligation of task to the identical individual.

35 U.S.C. §§ 102(a) and 102(b)(2)(C).

If the scope of “individual” in Part 102 excludes authorities entities, meaning both such authorities entities will not be entitled to patents underneath Part 102(a), which is inconsistent with 35 U.S.C. § 207(a)(1), or the federal government’s patents aren’t invalid beneath the circumstances of Part 102(a).  Additional, beneath such a development, authorities patents wouldn’t be entitled to the exclusion set forth in Part 102(b)(2)(C).  Neither of those interpretations might be right.

Not solely would excluding authorities entities from the which means of “individual” all through the Patent Act result in weird outcomes with respect to prior artwork, however it will additionally result in unusual outcomes with respect to Part 207(a)(1), as utilized to different provisions of the Patent Act:

individual to whom the inventor has assigned or is beneath an obligation to assign the invention might make an software for patent.  A individual who in any other case exhibits enough proprietary curiosity within the matter might make an software for patent on behalf of and as agent for the inventor on proof of the pertinent information and a displaying that such motion is acceptable to protect the rights of the events.  If the Director grants a patent on an software filed beneath this part by a individual aside from the inventor, the patent shall be granted to the actual get together in curiosity and upon such discover to the inventor because the Director considers to be enough.

35 U.S.C. § 118.

An software for patent for an invention filed on this nation by any individual who has, or whose authorized representatives or assigns have, beforehand frequently filed an software for a patent for a similar invention abroad which affords comparable privileges within the case of purposes filed in america or to residents of america, or in a WTO member nation, shall have the identical impact as the identical software would have if filed on this nation on the date on which the appliance for patent for a similar invention was first filed in such overseas nation, if the appliance on this nation is filed inside 12 months from the earliest date on which such overseas software was filed.

35 U.S.C. § 119(a).

However another provisions of regulation any individualand his successors, assigns, or authorized representatives, shall not obtain a United States patent for an invention if that individualor his successors, assigns, or authorized representatives shall, with out procuring the license prescribed in part 184, have made, or consented to or assisted one other’s making, software abroad for a patent or for the registration of a utility mannequin, industrial design, or mannequin in respect of the invention.  A United States patent issued to such individualhis successors, assigns, or authorized representatives shall be invalid, until the failure to acquire such license was by means of error, and the patent doesn’t disclose material inside the scope of part 181.

35 U.S.C. § 185.

If the scope of “individual” excludes the federal government, the governmental entities don’t want overseas submitting license to file purposes overseas.

Along with 35 U.S.C. § 207(a)(1) authorizing Federal businesses to use for patents, 37 C.F.R. § 1.46 makes clear that “individual” consists of assignees, which would come with authorities entities.[2]

Construing “individual” in Sections 252 and 318 relating to reissued patents as excluding authorities entities would likewise result in the unusual results of denying the federal government intervening rights:

A reissued patent shall not abridge or have an effect on the best of any individual or that individual’s successors in enterprise who, previous to the grant of a reissue, made, bought, provided to promote, or used inside america, or imported into america, something patented by the reissued patent, to proceed using, to supply to promote, or to promote to others for use, provided on the market, or bought, the precise factor so made, bought, provided on the market, used, or imported until the making, utilizing, providing on the market, or promoting of such factor infringes a legitimate declare of the reissued patent which was within the unique patent.

35 U.S.C. § 252.

Any proposed amended or new declare decided to be patentable and included right into a patent following an inter partes evaluation beneath this chapter shall have the identical impact as that laid out in part 252 for reissued patents on the proper of any individual who made, bought, or used inside the USA, or imported into america, something patented by such proposed amended or new declare, or who made substantial preparation therefor, earlier than the issuance of a certificates underneath subsection (b).

35 U.S.C. § 318(c); see additionally 35 U.S.C. § 328(c).

Additional, if “individual” have been to universally exclude authorities entities, then it might imply that such entities wouldn’t be entitled to quote prior artwork to the Workplace or institute ex partereexaminations:

Any individual at any time might cite to the Workplace in writing—

(1) prior artwork consisting of patents or printed publications which that individual believes to have a bearing on the patentability of any declare of a specific patent; or

(2) statements of the patent proprietor filed in a continuing earlier than a Federal courtroom or the Workplace through which the patent proprietor took a place on the scope of any declare of a specific patent.

35 U.S.C. § 301 (2012 ed.).

Any individual at any time might file a request for reexamination by the Workplace of any declare of a patent on the idea of any prior artwork cited beneath the provisions of part 301.

35 U.S.C. § 302.  Such a place can be inconsistent with present PTO apply as set forth in MPEP § 2203 (citing prior artwork) and MPEP § 2212 (ex parte reexamination) and opposite to the historic follow as mentioned in Part III infra.[3]

Lastly, in a minimum of one occasion, Congress explicitly famous that “individual” consists of “authorities entities”:

Any State, any instrumentality of a State, and any officer or worker of a State or instrumentality of a State, appearing in his official capability, shall not be immune, beneath the eleventh modification of the Structure of the USA or underneath another doctrine of sovereign immunity, from go well with in Federal courtroom by any individualtogether with any governmental or nongovernmental entity, for infringement of a patent beneath part 271, or for another violation underneath this title.

35 U.S.C. § 296(a).

In view of the foregoing, it’s clear that in some provisions of the Patent Act, the time period “individual” essentially ought to be interpreted to incorporate the federal government (e.g., 35 U.S.C. § 296(a), expressly together with authorities within the definition of “individual”), whereas in different provisions the time period “individual” ought to be interpreted to exclude the federal government (see, e.g., 35 U.S.C. §§ three(a) and 6(a), which clearly exclude the governmental entities just like the USPS, however would come with people within the authorities’s make use of).

Accordingly, reliance on common definitions from the Dictionary Act, 1 U.S.C. §§ 1 and eight, governing the U.S. Code generally, and likewise on different basic definitions of “individuals” from related case regulation (e.g., Cooper), might nicely trigger inadvertent issues with respect to the Patent Act. Fairly, as set forth under, the reply to the query posed by this case ought to depend upon the legislative context referring to creation of varied post-issuance patent problem proceedings and the PTO’s longstanding interpretation of “individual” to incorporate the governmental entities for functions of ex parte  and inter partes reexaminations. Cf. Cooper, 312 U.S. at 604-05 (“[T]right here is not any exhausting and quick rule of exclusion. The aim, the subject material, the context, the legislative historical past, and the chief interpretation of the statute are aids to development which can point out an intent, by means of the time period, to deliver state or nation inside the scope of the regulation.”).


[1] Cf.35 U.S.C. § 207(a)(1) (“Every Federal company is permitted to . . . apply for, get hold of, and keep patents or different types of safety in the USA and in overseas nations on innovations by which the Federal Authorities owns a proper, title, or curiosity . . . .”).

[2] See37 C.F.R. § 1.46(a) (“An individual to whom the inventor has assigned or is underneath an obligation to assign the invention might make an software for patent.”).

[3] SeeMPEP § 2203 (9thed. Rev. 08.2017, Jan. 2018) (“35 U.S.C. 301 states that ‘Any individual at any time might cite to the Workplace. . . . ‘  ‘Any individual’ might bea company or governmental entityas nicely as a person.”); MPEP § 2212 (9thed. Rev. 08.2017, Jan. 2018) (“35 U.S.C. 302 and 37 CFR 1.510(a) each point out that ‘any individual’ might file a request for reexamination of a patent.  Accordingly, there are not any individuals who’re excluded from with the ability to search reexamination. Firms and/or governmental entities are included inside the scope of the time period ‘any individual’.”).


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Charles R. Macedo

Charles R. Macedo

is a Companion at Amster, Rothstein & Ebenstein LLP, the place he advises and litigates in all areas of mental property regulation, together with patent, trademark and copyright regulation, with a particular emphasis in complicated litigation. He additionally assists shoppers in acquiring, sustaining and implementing patent and trademark portfolios. He has efficiently recovered domains registered to others utilizing shoppers’ logos.
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Peter Thurlow

is a Shareholder at Polsinelli and the present Vice President of the New York Mental Property Regulation Affiliation (NYIPLA), the first mental property regulation affiliation in New York with greater than 1,250 members. Based mostly on Pete’s in depth expertise engaged on issues on the USPTO, he acquired a second three-year time period beginning in January 2016 from the U.S. Secretary of Commerce to serve on the USPTO’s Patent Public Advisory Committee (PPAC). Based mostly on Pete’s vital expertise on USPTO post-grant issues, Pete chairs the USPTO’s PTAB subcommittee. The PPAC offers an annual report back to the White Home, U.S. Commerce Division, Home and Senate Judiciary Committees, and the USPTO.

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Robert Isackson

is a Parter with Leason Ellis. Working towards for over thirty years, Rob Isackson is an completed, front-line IP litigator, counselor, and advisor fluent in all points of mental property: patents, commerce secrets and techniques, logos, copyrights and designs. With a main concentrate on IP litigation on the trial degree, notably patent and commerce secret disputes and business disputes over know-how points, Rob’s IP apply consists of appellate litigation in addition to offering strategic counseling, recommendation and opinions on power of IP rights, freedom to function and litigation dangers, patent and trademark prosecution, portfolio assessments, commerce secret audits, negotiation and drafting of IP transactions and agreements, and M&A IP due diligence.

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Robert J. Rando

is the founder and lead counsel of The Rando Regulation Agency P.C. Mr. Rando is a Fellow of the Academy of Courtroom-Appointed Masters and, since 2004, has loved the privilege and honor of judicial appointment as a Particular Grasp in quite a few instances involving complicated patent regulation points. He’s a printed writer and frequent lecturer at regulation faculties and CLE packages on patent regulation and different IP and constitutional regulation points. He’s the present Treasurer for the New York Mental Property Regulation Affiliation (NYIPLA) and a member of the NYIPLA Amicus and Legislative Motion Committees. He’s additionally the present Chair of the Federal Bar Affiliation (FBA) Mental Property Regulation Part and serves on the FBA Nationwide Authorities Relations Committee.

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