Tuesday, 31 October 2017
Ending Soveriegn Immunity for Tribes from Inter Partes Review
U.S. Senator McCaskill has introduced a Bill that would remove sovereign immunity as a defense against Inter Partes Review of patents for Indian Tribes. The Bill is refreshingly short. It states:
To abrogate the sovereign immunity of Indian tribes as a defense in inter partes review of patents.
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,
SECTION 1. Abrogation of tribal immunity in certain patent claims.
(a) Definition.—In this section, the term “Indian tribe” has the meaning given the term in section 4 of the Indian Gaming Regulatory Act (25 U.S.C. 2703).
(b) Abrogation of immunity for purposes of inter partes review.—Notwithstanding any other provision of law, an Indian tribe may not assert sovereign immunity as a defense in a review that is conducted under chapter 31 of title 35, United States Code.
As previously discussed, the Bill is directed at Allergen’s recent attempt to use sovereign immunity of Indian Tribes to insulate patents from Inter Partes Review at the PTO by transferring its patents to the tribe in exchange for cash. Notably, Judge Bryson (of the Federal Circuit), sitting at the trial court level, recently asked Allergen to demonstrate that its transfer is not a “sham." Judge Bryson further found the Allergen patents to be obvious.