12 September 2017
Dublin
Reporter: Barney Dixon

Allergan transfers patents to Native tribe


Dublin-based pharmaceutical giant Allergan has transferred all Orange Book-listed patents for its Restasis dry eye treatment to a Native American tribe, granting the patents immunity from inter partes review (IPR) at the US Patent Trial and Appeal Board (PTAB).

The Saint Regis Mohawk Tribe holds sovereign immunity against IPR challenges and has since filed a motion to dismiss the multiple IPR challenges against Restasis.

Allergan says the agreement will have no impact on its patent litigation against the manufacturers of proposed generic versions of the drug.

The tribe will receive $13.75 million upon execution of the agreement and $15 million in annual royalties.

Bob Bailey, chief legal officer at Allergan, said: “The Saint Regis Mohawk Tribe and its counsel approached Allergan with a sophisticated opportunity to strengthen the defense of our Restasis intellectual property in the upcoming IPR proceedings before the PTAB.”

He added: "Allergan evaluated this approach closely, with expert counsel in patent and sovereign immunity law … We are impressed with the Tribe's thoughtful and enterprising approach, which will allow them to achieve their goals of self-reliance and help them address the most urgent needs in their community."

According to Bailey, the company thoroughly reviewed recent case law in which the PTAB denied IPR proceedings against universities based on claims of sovereign immunity.

In a joint statement with Allergan, the Saint Regis Mohawk Tribal Council said: “This is a viable and sound opportunity for the Saint Regis Mohawk Tribe to enter into the patent, technology and research sector as part of our overall economic diversification strategy.”

It added: “We realize that we cannot depend solely on casino revenues and, in order for us to be self-reliant, we must enter into diverse business sectors to address the chronically unmet needs of the Akwesasne community; such as housing, employment, education, healthcare, cultural and language preservation."

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