Sovereign immunity can create uneven playing field: Goodlatte
Sovereign immunity has been used to harm the IP system in recent years, according to Bob Goodlatte, chairman of the House Judiciary Committee.
He was speaking during a hearing on the deal between Allergan and a Native American tribe, the Saint Regis Mohawk Tribe.
In September, the Saint Regis Mohawk Tribe acquired the patent rights to Restasis (cyclosporine ophthalmic emulsion), a dry eye treatment, from Allergan.
The tribe, which received $13.75 million from Allergan, filed a motion to dismiss inter partes reviews (IPRs) brought by Mylan, based on the tribe’s sovereign immunity from IPR challenges.
Earlier this week, LSIPR reported that the US House of Representatives committee called the hearing on the issue of IP rights being owned by entities that claim sovereign immunity.
Numerous commentators queried whether the deal was a misuse of sovereign immunity.
Four experts on patent law also provided testimony at the hearing, which took place on Tuesday, November 7.
The experts were 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.
“The IP system is weakened, however, when some participants of the IP system do not play by the same rules as the rest,” warned Goodlatte, in a statement.
Goodlatte added that he shared the concern about the recent instances of private companies paying to “rent” the sovereign immunity of Native American tribes to protect their IP.
“If successful, these private companies will be able to enforce their patents against others, while exploiting the tribes’ sovereign immunity to prevent legitimate challenges to those patents at the US Patent and Trademark Office. In effect, these companies will not be playing on a level playing field.”
A spokesperson for Allergan said: “We are pleased to see that Congress is engaging in a productive discussion on the inherent issues in and potential reforms of the IPR process. This is an important discussion that needs to be had to ensure we are protecting innovation in the US."
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox
