Following the recent news of Allergan’s creative ‘renting’ of sovereign immunity from the Native American St. Regis Mohawk Tribe to avoid challenges before the IPR, Allergan has faced charges of hypocrisy and the St Regis Mohawk tribe have been at the forefront of the news in recent weeks. Thus, the Patent Lawyer Magazine spoke to Kilburn & Strode to get some specialist information on the case. You can recap the case up until now, here. The commentary below comes from  Kristina Cornish and Gavin Wai from Kilburn and Strode. Kristina is a Partner at Kilburn & Strode where she concentrates on patents pertaining to biotechnology and pharmaceutical chemistry, while Gavin is a Technical Assistant in the Life Sciences and Chemistry group of Kilburn & Strode. Kilburn & Strode was established in 1906 and is Europe’s leading IP law firm with offices in London and Munich.

“Charges of hypocrisy stem from Allergan having publicly slated the IPR process, criticising the different legal standards between the well-established federal courts’ proceedings and apparent slap-dash PTAB decisions. Criticism was angled at the fact that a patent can actually be upheld by a federal judge and then invalidated before the PTAB by a review panel that has been dubbed a ‘death squad’, having cancelled thousands of patents since the first IPR challenge was filed in 2012.

However, in view of the highly competitive and high-stakes world of pharmaceuticals, this begs the question ‘why wouldn’t Allergan act as they have and push the limits of the legal system for their own benefit?’ Commercially, their decisions make sense and they have not broken any laws.  

The likelihood of the upcoming US Supreme Court decision ruling IPRs unconstitutional hinges on the view that a patent is a property right that only federal courts, and not officers of Government, can revoke. This view is based on a US Supreme Court decision that can be traced all the way back to 1898. On top of this, a US Senator has recently drafted a bill aiming solely to remove Native American sovereign immunity from IPRs.

Consequently, it seems the tale of Allergan and the St. Regis Mohawk Tribe is entering its third and final act. The ensuing weeks will be pivotal in shaping the US IP landscape for many years to come.”