Allergan Invokes Tribal Immunity to Protect Patents

Sept. 12, 2017

In an attempt to shield the company's patents in administrative proceedings, Allergan has transferred patents on its blockbuster dry eye medicine, Restasis, to the St. Regis Mohawk Tribe.

The tribe, treated as a sovereign nation immune to civil lawsuits, will exclusively license the patents back to the company in exchange for ongoing payments.

Restasis is an opthalmic formulation of cyclosporine used to treat dry eyes. The drug is not due to go off patent in 2024, however, last December, the US Patent Office granted an inter partes review — a process that allows the court to cancel patents —of the relevant patents.

With the new deal, patented IP owned by the tribe is protected from inter partes review challenges by their sovereign immunity.

Under the terms of the agreement, the Tribe will receive $13.75 million upon execution of the agreement.  Additionally, the Tribe will be eligible to receive $15 million in annual royalties.

Read the NY Times article
Read the press release