Sovereign immunity: a venue-dependent protection

A recent University of Texas dispute perfectly illustrates the differing role sovereign immunity takes in proceedings at the Patent Trial and Appeal Board and district court, say Simon Roberts, Nitya Anand and Eric Wang of Hogan Lovells.

At first glance, sovereign immunity—a constitutionally and judicially-created doctrine that protects sovereign entities such as countries, states, or indigenous tribes from suit unless the entity has waived its immunity or consented to suit—may seem like a get-out-of-jail-free card for a sovereign patent owner involved in a patent dispute.

But, as the case between the University of Texas (UT), its licensee Gensetix, and Baylor College of Medicine illustrates, the immunities afforded to sovereign patent owners differ greatly depending on the venue of the dispute. Understanding those differences is central to developing a patent trial strategy across parallel venues.

Sovereign immunity in patent law

Sovereign immunity is a longstanding legal concept. It dates back to medieval monarchs and is often attributed to the phase “the King can do no wrong.” Although the founding of the US was premised on a rejection of monarchy, sovereign immunity nevertheless survived, instead imputed to the political state.