Law of the Land : Sovereign Immunity and Patent Validity

Recently, Allergan, a pharmaceutical company, transferred its Restatis patents to the St. Regis Mohawk Tribe for $13.75 million and annual royalties. Allergan’s deal was motivated by the desire to avoid patent invalidity challenges in the Patent Trial and Appeal Board (PTAB). One might ask: how does transferring a patent to a Native tribe protect it from invalidity claims? The answer is sovereign immunity.

The United States of America classifies Native tribes as “sovereign” and state courts, generally, will not hear civil suits against Native tribes. The few exceptions to this policy include when a tribe has “clearly waived” immunity and when the court has “unequivocally” permitted the civil suit. With a focus on sovereignty, the St. Regis Mohawk Tribe argues the PTAB must cease their inter partes review of Restatis patents. Allergan is not the first organization to take advantage of sovereign immunity; universities have also declared themselves as sovereign entities.

For several reasons, this case is quite significant. Firstly, the subject matter is novel and it will be interesting to see how the Board responds to the Tribe’s request. Some recent decisions seem to suggest the Board will listen to the St. Regis Mohawk Tribe. In Michigan v. Bay Mills Indian Community, the Supreme Court of the United States threw out a suit from the state of Michigan that attempted to bar a casino on a reserve. Conversely, the Supreme Court has issued decisions that seem to limit Native national sovereignty but the facts of those cases are highly different. In the 2017 case of Lewis v. Clarke, the Court ruled that a suit, against an individual employed by a tribe for an accident occurring off-reserve, could be brought in a state court. Will the present case be a decision that limits sovereignty or expands it? Will the intellectual property element affect the Board’s response?

Additionally, there are potentially competing rights in this case. Opponents of Allergan’s move argue it threatens accessibility to medicines. Some argue this transfer could empower an Indigenous community where unemployment is high and that sovereign immunity is a centuries-old key principle of international law. Sovereign immunity versus accessibility is a tricky debate to navigate. This is especially true when the sovereign immunity of an Aboriginal group is implicated.

One thing is certain. Whatever the Patent Trial and Appeal Board rules, many people will have strong opinions about the ruling.

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