Allergan Inc.'s assignment of patents on its blockbuster dry-eye drug Restasis to the St. Regis Mohawk Tribe has drawn the attention of Congress, commentators, and industry, as the Tribe has asserted sovereign immunity from suit in an IPR proceeding before the Patent Trial and Appeal Board. Such sovereign immunity assertions by tribes and states raise many questions. Do they comport with the post-grant review provisions of the America Invents Act? Will Congress act to prohibit them (if only with regard to tribal sovereign immunity)? If states or tribes litigate a patent in court, does that waive their immunity in IPR proceedings, as one expanded panel of the PTAB has ruled? Will states and tribes become patent repositories for drug or other patents assigned to them by third party patent owners hoping to avoid IPR? Our panel will discuss the current legal and legislative landscape surrounding these sovereign immunity issues and how they might best be addressed.

Ability Level: Intermediate

Session ID: 21153