Tribes may see new standard for intellectual property ownership
Q: What are some of the general boxes that a person or organization must check before establishing they own a patent?
A: A patent is a government granted property right that excludes others from making, using or selling an invention for a specified term. Patent ownership is important because the owner enjoys all the patent’s rights, title and interest. In the United States, the inventor is presumed to be the initial owner of the patent rights, even if the invention was created by an employee within the scope of employment (with a few exceptions). If there’s more than one inventor, patent rights will be jointly owned. If the inventors do nothing to transfer ownership to someone else, each of them will remain the owner for the life of the patent term. However, if the inventor (s) sign a patent assignment agreement, then ownership of the patent is transferred to or assigned to a third party. It’s important to record any assignment or other interest in a patent with the U.S. Patent and Trademark Office as soon as possible after execution.
Q: What recent court case brought Native American tribal rights to patents into the spotlight, and how is it different?
A: In September, global pharmaceutical company Allergan transferred its patents for Restasis, a blockbuster eye drug, to the Saint Regis Mohawk Tribe, a Native American tribe based in New York. Allergan was attempting to avoid a proceeding that lets parties challenge the validity of patents called inter partes review, a process that could have invalidated Allergan’s Restasis patents. Unlike a typical individual or entity, recognized Native American tribes have sovereign immunity from certain patent challenges. State-owned university patents recently also were held immune to inter partes review, but this is the first type of agreement that has employed a Native American tribe in an attempt to shield a company’s patents.
Q: Once this issue is resolved, what are the ramifications for tribes and for businesses working with tribes?
A: If Allergan’s strategy is successful, a company could take advantage of tribal sovereign immunity to shield itself from inter partes review proceedings, and Native American tribes could enter similar deals with other patent owners to generate revenue for its members. Allergan’s maneuver, however, appears to have failed to pay off, as at least one member of the judiciary has noted serious concerns about this tactic. Additionally, the House Judiciary Committee called for a congressional hearing and potential legislation to limit the immunity of tribes in patent cases. Recently, Apple challenged the validity of an electrical circuitry patent held by a company with ties to a trio of Native American tribes. This is only the second case the USPTO has had to address whether patents owned by Native American tribes are barred from inter partes review by a tribe’s sovereign immunity, should the company employ the defense.