Tribal Sovereignty Can't Protect Patents From Inter Partes Review

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By William Vogeler, Esq. on April 19, 2019 3:07 PM

It's the end of the road for Native American tribes that tried to invoke sovereign immunity to protect patents.

In Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, the U.S. Supreme Court denied a petition to review a decision against Allergan for transferring a drug patent to the Saint Regis Mohawk Tribe. The company transferred the patents, then leased them back, to get around an inter partes challenge to the patents.

So actually, it's the end of the patent-scheme road for Allergan. The tribes just won't be getting any more money for such sovereignty deals.

No Sovereignty Deal

More than 500 Native American tribes have a carved out piece of America, which includes sovereignty within the laws of the United States. In recent years, some made money through patent leasing.

The Saint Regis Mohawk Tribe did it with Allergan. It was a good deal, including a $17.5 million origination fee and $15 million a year after that. But in 2016, Mylan Pharmaceuticals petitioned for an inter partes review of Allergan's the tribe's patents. The tribe moved to terminate the proceedings, arguing its sovereign immunity, but it didn't work.

The U.S. Federal Circuit Court of Appeals said the United States Patent and Trademark Office acts for the United States as a "superior sovereign." It has the power to review its own grants of patents, the appeals court said.

Allergan petitioned the Supreme Court, and the rest is history -- short as it was.

A Short History

While some tribes have made money in casinos and other ventures, the patent deal could have been a valuable revenue source for the Mohawk Tribe.

"We realize that we cannot depend solely on casino revenues and, in order for us to be self-reliant, we must enter into diverse business sectors to address the chronically unmet needs of the Akwesasne community, such as housing, employment, education, healthcare, cultural and language preservation," the Mohawk Tribe said.

At the time, BioPharm Insight said it could lead other Native American tribes to pursue similar opportunities. Not anymore.

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