Washington Law Review

Comment

Rent-A-Tribe: Using Tribal Immunity to Shield Patents from Administrative Review

October 01, 2018 | 93 Wash. L. Rev. 1449

Abstract:  In 2017, Allergan Pharmaceuticals entered into an agreement with the Saint
Regis Mohawk Tribe (SRMT). Allergan agreed to assign several patents to SRMT and to pay
an initial sum of $13.75 million and annual royalties of approximately $15 million. SRMT, in
exchange, licensed the rights to use the patents back to Allergan and agreed not to waive its
tribal immunity in any administrative proceeding challenging the patents. Two outcomes were
expected as a result of this Allergan-Mohawk agreement. First, Allergan would retain the rights
to manufacture and market a highly profitable drug while insulating the underlying patents
from an unforgiving administrative inter partes review (IPR). Second, SRMT would embark
on a new business venture of collecting and relicensing patents from third parties, effectively
“renting out” its sovereign immunity. The response from lawmakers, the judiciary, the
executive branch, and the public at large was acrimonious. The agreement was branded in
public forums as a “sham” and the Patent Trial and Appeal Board held the patents assigned to
SRMT were not shielded by tribal immunity. This Comment argues the Allergan-Mohawk
agreement is a legally effective means of avoiding IPR. Absent an express waiver of tribal
immunity by Congress or the tribe itself, a tribe may not be subject to a private claim. This rule
extends to IPR proceedings which closely parallel private suits. Therefore, contracts like the
Allergan-Mohawk agreement effectively shield patents from IPR.

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