Brief of the R Street Institute as Amicus Curiae: Return Mail, Inc. v. United States Postal Service

Abstract

In Return Mail v. U.S. Postal Service, the Supreme Court will consider whether the United States government is a "person" qualified to petition for post-issuance review of a patent before the U.S. Patent and Trademark Office, under the provisions of the America Invents Act. This brief makes two primary arguments in support of treating the government as a person.

First, treating the government as a person best effectuates the intent of Congress as expressed in the America Invents Act. Congress created the post-issuance review proceedings to combat the well-known problem of erroneously granted patents, and intended to permit as many interested parties as possible to take advantage of those proceedings, thereby promoting a public good of correctness in existing patent grants. Since the government's petitioning for review of a patent grant brings about that public good no less than any other private entity's petitioning for the same, it follows that permitting the government to file such petitions is consistent with the intent of Congress.

Second, permitting the government to initiate post-issuance review serves important interests of good governance. As the patent-owner petitioner argues, the government does have an alternative avenue for having a patent cancelled: persuading or ordering the director of the U.S. Patent and Trademark Office to initiate a sua sponte reexamination. But between that procedure and having the government petition for post-issuance review under the AIA, the latter is superior insofar as it provides greater transparency into the government's arguments, it offers stronger due process to patent owners whose patents are challenged, and it implements separation of administrative functions to a clearer degree.

Keywords: patents, AIA, inter partes review, administrative law, separation of functions

JEL Classification: O30, O38, H11