Can the Government be Sued for Patent Infringement?

     Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999) held; No, a State or State entity cannot be sued for patent infringement. In a 5-to-4 decision, the United States Supreme Court began by noting that there was no doubt that the Patent and Plant Variety Protection Remedy Clarification Act passed in 1992, intended to abrogate states' immunity from patent infringement. However the court concluded that neither the Commerce Clause nor the Patent Clause give Congress the power to curtail state sovereign immunity from patent infringement claims. The Court reasoned that although the Fourteenth Amendment authorizes Congress to pass "appropriate legislation" to protect parties from being deprived of property without due process, this in itself does not permit the abrogation of state sovereign immunity. The court also concluded that because the Act's language was overly broad in its scope, the Court dismissed College's suit and declared unconstitutional corresponding segments of the Act.

     However, 28 USC 1498(a) is recited below:
(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture. Reasonable and entire compensation shall include the owner’s reasonable costs, including reasonable fees for expert witnesses and attorneys, in pursuing the action if the owner is an independent inventor, a nonprofit organization, or an entity that had no more than 500 employees at any time during the 5-year period preceding the use or manufacture of the patented invention by or for the United States. Nothwithstanding [1] the preceding sentences, unless the action has been pending for more than 10 years from the time of filing to the time that the owner applies for such costs and fees, reasonable and entire compensation shall not include such costs and fees if the court finds that the position of the United States was substantially justified or that special circumstances make an award unjust.

For the purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authorization or consent of the Government, shall be construed as use or manufacture for the United States.

The court shall not award compensation under this section if the claim is based on the use or manufacture by or for the United States of any article owned, leased, used by, or in the possession of the United States prior to July 1, 1918.

A Government employee shall have the right to bring suit against the Government under this section except where he was in a position to order, influence, or induce use of the invention by the Government. This section shall not confer a right of action on any patentee or any assignee of such patentee with respect to any invention discovered or invented by a person while in the employment or service of the United States, where the invention was related to the official functions of the employee, in cases in which such functions included research and development, or in the making of which Government time, materials or facilities were used.

So, under 28 U.S.C. 1498(a) the answer is yes.  However this may not apply to government contractors.

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Copyright Robert J. Sayfie, P.C., 2017