When Can States, Tribes Be Sued? It’s Confusing

Confusion reigns on the issue of when tribal nations and states can escape having their patents challenged at the U.S. Patent and Trademark Office.

Sovereign immunity allows a government to avoid being sued unless it allows it. And it’s unclear whether sovereign immunity can be invoked to avoid administrative patent challenges—known as inter partes reviews or IPRs—at the PTO’s Patent Trial and Appeal Board.

The patent bar is waiting for decisions in appeals of two major PTAB cases involving the sovereign immunity issue—one over patents the drug company Allergan transferred to the Saint Regis Mohawk Tribe and another case over the University of Minnesota’s patent rights.

Meanwhile, the status of patent challenges at the PTAB remains uncertain, according to patent attorney Dominick A. Conde of Fitzpatrick, Cella, Harper & Scinto in New York. Conde spoke on a panel at the American Conference Institute’s 12th Annual Paragraph IV Disputes conference in New York.

“The real issue is there’s so much confusion out there,” Conde said. The unsettled issues of both state and tribal immunity could reach the nation’s highest court and ultimately will affect whose patents can be challenged before the PTAB, he said.

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