Eye-Opening: Sovereign Immunity and Patents

Eye-Opening: Sovereign Immunity and Patents

What do the drug company Allergen and the St. Regis Mohawk Tribe in Northern New York have in common? Six patents related to its highly profitable dry-eye drug, Restasis.

Ars Technica reports on the “unprecedented move” by a company to ward off future challenges to its patents by shielding them with the Native American tribe’s sovereign immunity. In exchange for protecting RESTASIS intellectual property, the St. Regis Mohawk Tribe is to receive $13.75 million immediately and $15 million annually.

In 2011, the America Invents Act permitted an “inter partes review” (IPR) to take place at the Patent Trial and Appeal Board (PTAB). This process meant significant legal savings for the challenger seeking to invalidate a patent — hundreds of thousands of dollars compared to millions in district court.

Dallas law firm Shore Chan DePumpo conceived the “sophisticated opportunity” and approached the tribe with it. Together, they brokered a deal with the drug company. Says Ars, the powerful move has potential, and it could also attract non-practicing entities too.

According to Josh Landau of the Computer and Communications Industry Association, whether or not it will work is not the important question. It’s whether it should work. Says the longtime patent reform advocate, a challenge to the validity of a company’s patent shouldn’t simply go away by paying off a Native American tribe.

Share this entry
LLM unifies the legal process by combining legal holds, case strategy, matter and budget management, review and analytics in a single, web-based platform. We connect legal strategy to tactics in a way no one else can, so every part of the process is actionable. Our product scales to help corporate and law firm teams gain cost-savings and eliminate inefficiencies.
Send this to a friend