One of the most interesting issues that’s being litigated in patent law these days is the ability to sue a sovereign entity for patent infringement or challenge the validity of a patent owned by a sovereign entity at the U.S. Patent Office. It is well established that the Eleventh Amendment precludes any suit against a sovereign entity, unless it has waived its immunity. Presently, each U.S. state and American tribal nation is considered its own sovereign entity. Patent litigants have attempted to use this doctrine to shield either their patents from challenges at the PTO or themselves from litigation. In the United States, sovereign immunity is set forth in the Eleventh Amendment in the U.S. Constitution. The Amendment precludes any suit against a sovereign entity unless it has specifically waived that immunity. In intellectual property, this limits the ability to sue a sovereignty entity for patent infringement or challenge the validity of a patent owned by a sovereign entity in courts and at the U.S. Patent Office.
When, in 2013, Congress overhauled the America Invents Act (AIA), the idea of Sovereign Immunity came back into play for patent holders. The reason for this was the AIA’s sweeping reforms to Patent Office’s administrative proceedings, allowing private parties to challenge the validity of already-issued patents at the PTO’s Patent Trial and Appeal Board (PTAB)—known as inter partes review (IPR). 35 U.S.C §314. Pharmaceutical companies, in an attempt to find creative and unique solutions to protect their patents, attempted to use Sovereign Immunity to shield the validity of their patents—the most notable is Allergan’s deal with the Mohawk Tribe.
