12/03/18

Tribal Sovereign Immunity at the Patent and Trademark Office

Tribal Sovereign Immunity at the Patent and Trademark Office

Brandon Andersen

The America Invents Act was at least partially designed to weed out invalid patents through administrative proceedings. One such proceeding, inter partes review, is popular among challengers but criticized by patent holders for its high invalidation rate. Some disgruntled patent holders have discovered an old doctrine as a potential new tool to avoid inter partes review: tribal sovereign immunity.

As sovereigns, Indian tribes are immune from suit unless Congress abrogates their immunity or a tribe waives it. If that immunity extends to inter partes review, a non-sovereign can avoid review by assigning his patent to an Indian tribe willing to license the patent back to him (for a fee). While beneficial to patent owners, this use of tribal sovereign immunity undermines the purpose of the America Invents Act, and Congress may respond by restricting tribes’ immunity.

Despite the potential harm, this Article argues that (1) tribal sovereign immunity applies to inter partes review proceedings, (2) patent-owning tribes have not waived their immunity, (3) Congress has not (yet) abrogated that immunity in the context of patents, and (4) unless a patent-owning tribe transfers substantially all its rights to a non-sovereign, any inter partes review of a tribal-owned patent should be dismissed.

100 J. Pat. & Trademark Off. Soc’y 332(2018)

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