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Patent Law—Authority of Government to Institute Patent Review Proceedings

Return Mail Inc. v. U.S. Postal Service, No. 17-1594

Section 18 of the Leahy-Smith America Invents Act authorizes a “person” who “has been sued for infringement” of a covered-business-method patent to institute a review of the validity of the patent by the U.S. Patent and Trademark Office. The federal government cannot be a defendant in a patent infringement action brought under the Patent Act. But a patent owner may file an action in the U.S. Court of Federal Claims to seek reasonable compensation for the government’s use of a patented invention “without license of the owner thereof or lawful right to use or manufacture the same.” 28 U.S.C. § 1498(a). The Supreme Court has granted certiorari to decide whether the federal government is authorized to institute Section 18 review proceedings when it faces an action under § 1498(a).