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6 October 2017Americas

Tribe ‘outraged’ at bill seeking to revoke IPR immunity

The Saint Regis Mohawk Tribe has said it is “outraged” by proposed legislation introduced by Senator Claire McCaskill aimed at tackling sovereign immunity.

Yesterday, Reuters  reported that the bill says tribal sovereign immunity cannot be used to block patent review by the US Patent and Trademark Office.

McCaskill said: “Congress never imagined tribes would allow themselves to be used by pharmaceutical companies to avoid challenges to patents, and this bill will shut the practice down before others follow suit.”

In September, Allergan announced a deal with the Native American tribe which transferred the drug company’s patent rights for dry eye treatment Restasis (cyclosporine ophthalmic emulsion).

Allergan paid the tribe $13.75 million and the group granted Allegan an exclusive licence to the treatment.

On September 22, the tribe filed a motion to dismiss the IPRs of the patents, based on the tribe’s sovereign immunity from IPR challenges.

The University of Maryland, Baltimore successfully employed the immunity strategy in May this year, when the Patent Trial and Appeal Board held that a heart valve patent owned by the university was immune to IPR.

Almost immediately after the Allergan deal came to light, commentators questioned whether the agreement was a misuse of sovereign immunity.

In response to the backlash, the tribe said: “It appears that the strategy is a concern only when a tribe decides to enter the same business for the benefit of its community.”

Earlier this week, LSIPR  reported that a US House of Representatives committee began a probe into the patent deal.

Allergan stated that it will comply with the request and that, while it fully recognises the need for information, the committee’s focus should be on the IPR process and its “negative impact on life sciences innovation”.

Now the tribe has hit out again, this time against McCaskill’s bill, explaining that it is “outraged” by the proposed legislation which “specifically targets Indian tribes, yet exempts state universities and other sovereign governments engaged in the very same IPR process”.

“The double standard that is being introduced by the senator as a solution for a perceived abuse of the IPR proceedings does nothing to solve the underlying problem,” said the tribe.

The statement went on to say: “It is cruelly ironic that Indian tribes, with the highest unmet healthcare needs in the entire country, are being attacked for exercising their sovereign obligation to fill gaps in health coverage caused by the federal government’s abject failure to uphold its trust responsibility.”

McCaskill also sent a letter to the Pharmaceutical Research and Manufacturers of America (PhRMA) asking the organisation’s president to review whether Allergan’s actions are consistent with the mission of the organisation.

She also asked PhRMA to review whether “actions to block patent challenges through claims of tribal sovereign immunity align with PhRMA efforts to promote innovation and discourage predatory pricing practices and anticompetitive conduct”.

Allergan declined to comment.

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More on this story

Americas
16 October 2017   The Saint Regis Mohawk Tribe has launched a fierce defence of its patent licensing deal with Allergan, giving the Senate Judiciary Committee six main reasons which justify the agreement.
Americas
6 November 2017   A US House of Representatives committee has called a hearing on the issue of IP rights being owned by entities that claim 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.

More on this story

Americas
16 October 2017   The Saint Regis Mohawk Tribe has launched a fierce defence of its patent licensing deal with Allergan, giving the Senate Judiciary Committee six main reasons which justify the agreement.
Americas
6 November 2017   A US House of Representatives committee has called a hearing on the issue of IP rights being owned by entities that claim 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.