Sovereign Immunity and Patents at the PTAB and District Courts (Live MBHB Webinar)

Tues., May 22, 2018 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx 

The concept of sovereign immunity and its use to shield state actors (such as universities) from patent infringement liability has been controversial, particularly as such universities have participated actively in patenting inventions under the Bayh-Dole Act. Concern over using sovereign immunity as a shield was heightened recently when Allergan transferred the patents protecting its blockbuster Restasis drug to the St. Regis Mohawk Tribe in an effort to avoid invalidation in inter partes review proceedings.

So far these efforts have been unsuccessful; the Patent Trial and Appeal Board (PTAB) denied the Tribe’s motion to dismiss the IPRs in February and is proceeding (absent Federal Circuit intervention) to Final Hearing scheduled in April.

In addition, Congress is threatening to act by considering legislation that would prohibit asserting tribal sovereign immunity in any Patent Office proceeding.

This MBHB webinar will discuss sovereign immunity as it applies to Native American Tribes in comparison with the several States and review the Allergan strategy for protecting patent franchises for blockbuster drugs, as well as similar efforts for high technology inventions. We will also consider the scope of Congressional authority on this question and the likelihood for legislative intervention.


Presenter(s): MBHB attorney Kevin Noonan, Ph.D., James Lovsin, and George “Trey” Lyons, III

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law. 

NOTE: MCLE credit is not available for this archived recording. 

Access an archived audio version of this webinar here

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