Tuesday, February 27, 2018

Quick look: Sovereign Immunity Does Not Prevent Post-Grant Review Proceedings

Patent owners have long complained that the Post-Grant Review Proceedings ("PGR") created in the America Invents Act tilt strongly in favor of invalidating patents.  The PGR procedures are so effective at destroying patent rights that the former Chief Judge of the Federal Circuit Court of Appeals has called the administrative panels deciding PGRs "death squads destroying property rights." Indeed, patent valuations have cratered in response.

Allergan decided that the best chance of protecting the fruits of its enormous investment in innovation was to assign some of its patents to a Native American tribe.  In Mylan and Teva v. St. Regis Mohawk Tribe, the Patent Trial and Appeal Board held that PGR is the type of proceeding to which sovereign immunity does not apply.

Given the enormous potential value of the patents at issue, it is likely that this case will end up at the Federal Circuit and, potentially, the U.S. Supreme Court.  At the moment, however, the complications introduced by assigning patents to sovereign entities seem pretty high compared to the likely benefits (or lack of benefits).

Stay tuned.  In the meantime, it could all become moot if the PGR system is held to be unconstitutional in a pending case expected to be decided in the coming months.

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