Allergan’s strategy to transfer ownership of six patents of a dry eye drug to the Saint Regis Mohawk Tribe is questionable, according to partner Matthew I. Kreeger in the BioCentury article “Allergan partners with tribe to fight IPR.”
“I’m skeptical about the strategy,” he said pointing to differences between the sovereign immunity cases involving universities and Allergan’s situation. “The cases the PTO reviewed where it found sovereign immunity were state-owned universities, and in both cases there were no pending district court cases. Here they want to keep the district court case going with Allergan as patentee and at the same time tell PTAB that the patents have been transferred [to the tribe].”
He continued, “as a policy matter, it would be pretty disruptive if any patent holder could pull a maneuver like this. I think the Patent Office will look for ways to make sure this strategy doesn’t get out of hand.”
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