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Allergan and St Regis Mohawk Tribe take patent ruling to Supreme Court

Published on 28/01/19 at 09:56am

Allergan and the St Regis Mohawk Tribe have asked the Supreme Court to defend a 2017 patent agreement which would prevent generic competition on Allergan’s best-selling eye medication, Restasis.

The case harks back to 2017, when the Irish-tax registered firm Allergan, transferred six patents on its eye drug Restasis, to the St Regis Mohawk Tribe, based in Franklin County, New York.

Restasis, which sells for around $657 for a months supply, had sales of nearly $1.5 billion in 2017.

The deal saw Allergan pay the tribe $13.75 million up front, and agree to pay as much as $15 million a year in royalties for as long as the patents remained valid.    

The agreement came as Allergan faced legal challenges from a number of generic drugmakers, including Mylan, Teva and Akorn, which challenged the validity of Allergan’s patents in the United States through an ‘inter partes review’.

However in striking the deal, Allergan sought to avoid the ‘inter partes review’, relying on the sovereign tribal government’s immunity from the US Patent Office’s decisions.

The strategy however failed, after the patent board decided that tribal immunity does not apply to inter partes review cases, in February 2018.

Thus Allergan are taking the case to the Supreme Court as they ask the higher body to reverse the decision.  

Speaking to the New York Times, Michael A. Carrier, a law professor at Rutgers University, commented: “This has nothing to do with the purpose of tribal immunity and everything to do with evading the patent system. Drug companies should not be able to use this shell game of transferring patents to Native American tribes just so they can escape review at the patent office"

Louis Goss

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