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6 November 2017Americas

Congress sets date for hearing on Allergan-tribe deal

A US House of Representatives committee has called a hearing on the issue of IP rights being owned by entities that claim sovereign immunity.

In an announcement made on Thursday, November 2, the House Judiciary Committee’s subcommittee on IP said that the hearing, “ Sovereign Immunity and the Intellectual Property System”, will take place on Tuesday, November 7.

In September, the Saint Regis Mohawk Tribe acquired the patent rights to Restasis (cyclosporine ophthalmic emulsion), a dry eye treatment, from Allergan.

Allergan paid the tribe $13.75 million in the deal and the tribe granted Allergan an exclusive licence to the treatment.

The tribe then filed a motion to dismiss inter partes reviews (IPRs) brought by Mylan, based on the tribe’s sovereign immunity from IPR challenges.

Commentators have questioned whether the deal was a misuse of sovereign immunity.

In October, a US House of Representatives committee began a probe into the deal, calling it an “unconventional manoeuvre”.

The patent transfer raises questions for Congress as the “exchange may impair competition across the pharmaceutical industry and ultimately dissuade companies from pursuing less costly generic alternatives to brand drugs”, said the House Committee on Oversight and Government Reform in a letter to Allergan.

The tribe launched a defence of its deal in a letter to the Senate Judiciary Committee, citing six main reasons which justify the agreement, including that tribal governments should be able to maintain parity with states and public universities.

Also in October, Circuit Judge William Bryson, at the US District Court for the Eastern District of Texas, invalidated several Allergan patent claims at the centre of the controversy.

Four experts on patent law will provide testimony at the hearing: Karl Manheim, professor of law at Loyola Law School; William Jay, partner and co-chair of appellate litigation at Goodwin Procter; Philip Johnson, former senior vice president of IP strategy and policy at Johnson & Johnson; and Christopher Mohr, vice president for IP and general counsel at the Software and Information Industry Association.

Darrell Issa, chairman of the subcommittee, said: “This hearing is an important look at the ways that the system can be gamed under the guise of sovereign immunity as a means to shield patents from the checks and balances intended by law and the changes Congress may need to make to address it.”

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More on this story

Americas
6 October 2017   The Saint Regis Mohawk Tribe has said it is “outraged” by proposed legislation introduced by Senator Claire McCaskill aimed at tackling sovereign immunity.
Americas
9 November 2017   Sovereign immunity has been used to harm the IP system in recent years, according to Bob Goodlatte, chairman of the House Judiciary Committee.
Americas
13 November 2017   On November 7, the House Judiciary Committee’s subcommittee on IP took part in the “Sovereign Immunity and the Intellectual Property System” hearing.

More on this story

Americas
6 October 2017   The Saint Regis Mohawk Tribe has said it is “outraged” by proposed legislation introduced by Senator Claire McCaskill aimed at tackling sovereign immunity.
Americas
9 November 2017   Sovereign immunity has been used to harm the IP system in recent years, according to Bob Goodlatte, chairman of the House Judiciary Committee.
Americas
13 November 2017   On November 7, the House Judiciary Committee’s subcommittee on IP took part in the “Sovereign Immunity and the Intellectual Property System” hearing.