11 September 2017Americas

Allergan and Native American tribe in patent deal

Allergan has transferred its patent rights for a dry eye treatment to a Native American tribe, in a bid to obtain immunity against an inter partes review (IPR).

The Saint Regis Mohawk Tribe has acquired Restasis (cyclosporine ophthalmic emulsion) and has granted the pharmaceutical company an exclusive licence to the treatment.

According to a press  release from Allergan, published on Friday, September 8, the tribe now owns all Orange Book-listed patents for Restasis.

The tribe will file a motion to dismiss an ongoing IPR of the Restasis patents, based on the tribe’s sovereign immunity from IPR challenges.

Allergan said it had reviewed recent case law on patent and sovereign immunity law thoroughly.

This included a review of a Patent Trial and Appeal Board (PTAB) ruling in May this year, which held that a heart valve patent owned by the University of Maryland, Baltimore, is immune to IPR.

The patents transferred to the tribe include US patent numbers 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930; and 9,248,191.

The transfer of ownership has no effect on pending Abbreviated New Drug Application patent litigations.

Bob Bailey, chief legal officer for Allergan, said: “The Saint Regis Mohawk Tribe and its counsel approached Allergan with a sophisticated opportunity to strengthen the defence of our Retasis IP in the upcoming IPR proceedings before the PTAB."

The recognised elected government of the Mohawk people, the Saint Regis Mohawk Tribal Council, said: "This is a viable and sound opportunity for the Saint Regis Mohawk Tribe to enter into the patent, technology and research sector as part of our overall economic diversification strategy.”

The tribe added that casino revenue is not enough to sustain them and so they have decided to branch out into different sectors.

Under the agreement, the tribe will receive $13.75 million and will be eligible to receive $15 million in annual royalties.

Allergan received $1.5 billion in sales for Restasis last year.

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More on this story

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4 October 2017   A US House of Representatives committee has begun a probe into Allergan’s patent deal with a Native American tribe.
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17 October 2017   A US judge has said Allergan’s controversial patent licensing deal with a Native American tribe could spell the end for the inter partes review.
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20 April 2018   The Saint Regis Mohawk Tribe and Allergan have filed a brief in a dispute over whether tribal sovereign immunity can protect patents from the inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB).

More on this story

Americas
4 October 2017   A US House of Representatives committee has begun a probe into Allergan’s patent deal with a Native American tribe.
Americas
17 October 2017   A US judge has said Allergan’s controversial patent licensing deal with a Native American tribe could spell the end for the inter partes review.
Americas
20 April 2018   The Saint Regis Mohawk Tribe and Allergan have filed a brief in a dispute over whether tribal sovereign immunity can protect patents from the inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB).