The Cato Institute and Professor Gregory Dolin submit brief supporting patentees in interpretation of America Invents Act

Client(s) Dolin, Gregory and The Cato Institute

On behalf of the Cato Institute and Professor Gregory Dolin, Jones Day submitted an amici curiae brief arguing that executive agencies may not initiate post-grant, inter partes, and covered-business-method review proceedings before the Patent and Trademark Office. The case implicates the America Invents Act, which permits any "person" to initiate these proceedings. The Federal Circuit held that executive agencies are such "persons." The amicus brief supports reversal for two reasons. First, the Federal Circuit's reading of "person" would permit independent executive agencies to initiate patent review proceedings that challenge the PTO's interpretation of the patent laws, thereby disrupting the uniform enforcement and application of the patent laws. Second, the Federal Circuit's reading would create due process problems by forcing patentees to defend the patentability of their patents before the Executive Branch in cases where the Executive Branch has a direct interest and the power to manipulate the outcome of the proceedings.

The court will likely issue its decision by June 2019.

Return Mail, Inc. v. United States Postal Service, et al., No. 17-1594 (U.S.)