The Supreme Court has ruled (opinion here) that the US government is not a person for purposes of requesting AIA reviews at the USPTO.
As we discussed after oral arguments (here), some members of the Court were having difficulty understanding the difference between the ability to obtain a patent versus the right to petition for review of someone else’s patent. As stated in our previous post:
This hypothetical is of course wrong. Whether or not a challenged patent is upheld by the PTAB, that patent document is still going to be prior art to the government’s new invention that it is seeking to patent. Nothing is preventing the government from inventing at all, at least nothing that can be solved by attacking the prior art reference as invalid before the PTAB. Rather, the issue is that the government might be liable for infringing if it practices its new invention.
Fortunately, the majority, including Justice Sotomayor, also recognized the folly of that thinking and addressed it directly in the opinion:
The US government will now have to deal with infringement without use of some of the tools provided in the AIA.