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Patently Absurd: Critiquing the USPTO’s Disparate Treatment of Tribal and State Immunity in Inter Partes Review


Maya Ginga


December 22, 2018

On September 8, 2017, Allergan and the Saint Regis Mohawk Tribe announced an agreement to transfer six patents protecting Restasis to the Tribe.

Allergan and Saint Regis believed that because a suit against the Tribe (either an administrative adjudication or civil litigation) as the patent holder should be dismissed for lack of jurisdiction due to tribal immunity, the drug’s intellectual property would remain somewhat insulated from third party legal attacks.

In the light of the Allergan–Saint Regis deal, this Note argues that the legal framework for sovereign immunity should be the same with respect to state and tribal patent holders. Additionally, this Note argues that because it is unlikely Congress possesses the constitutional authority to abrogate state immunity, that the legislature should unequivocally extend state and tribal sovereign immunity in IPRs. To argue this, this Note explores the policy concerns and justifications of tribal and state immunity within administrative patent review.