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ARTICLE · 26 FEBRUARY 2018

PTAB Denies Tribal Immunity Bid

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In addition to the state sovereign immunity dispute now headed to the Federal Circuit, you might recall that the Patent Trial & Appeal Board (PTAB) was also considering the related question of whether sovereign immunity applies to Board proceedings involving Native American tribes.

United StatesIntellectual Property

Federal Statutes Applicable to Tribes Absent Expression to the Contrary

In addition to the state sovereign immunity dispute now headed to the Federal Circuit, you might recall that the Patent Trial & Appeal Board (PTAB) was also considering the related question of whether sovereign immunity applies to Board proceedings involving Native American tribes. Last Friday, the Board decided that tribal immunity does not apply to USPTO proceedings in Mylan v. Saint Regis Mohawk Tribe.

The decision ( here) explains:

Congress has enacted a generally applicable statute providing that any patent (regardless of ownership) is "subject to the conditions and requirements of [the Patent Act]." 35 U.S.C. § 101; see also 35 U.S.C. § 261 ("Subject to the provisions of this title, patents shall have the attributes of personal property.") (emphasis added). Congress has further determined that those requirements include inter partes review proceedings. See 35 U.S.C. §§ 311–319.

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