[Gnso-igo-ingo-crp] “Selling” Patents to Sovereign Nations Shouldn’t Mean Bad Patents Can’t Be Challenged

[George Kirikos]

Hi folks,

After posting that WindCreek.com tribal immunity court case earlier
today, I noticed a posting by the EFF today on a related tribal
immunity issue, in relation to patents:

https://www.eff.org/deeplinks/2017/12/selling-patents-sovereign-nations-shouldnt-mean-bad-patents-cant-be-challenged

A large drug company is attempting to game the patent system by
pretending to "sell" some patents to the Saint Regis Mohawk tribe.
Unlike a normal "sale", in this sham transaction, the Mohawk tribe
would receive money from Allergan! And, the tribe would be expected to
assert immunity in the event its patents are challenged by others at
the Patent Office.

"This deal has significant ramifications for the patent system if it
is successful. As one judge described the deal:

What Allergan seeks is the right to continue to enjoy the considerable
benefits of the U.S. patent system without accepting the limits that
Congress has placed on those benefits through the administrative
mechanism for canceling invalid patents."

The parallels to our own work with the mutual jurisdiction clause is
evident (both in the IGO case, and in the interrelated UK "cause of
action" situation too).

The EFF made a brief that is very comparable to the "in rem" Option #6
proposal in this very PDP:

"On November 30, 2017, EFF and Public Knowledge submitted a brief
arguing that the Patent Office has all the authority it needs to
continue the inter partes review proceeding, despite the Tribe’s
sovereign immunity. We argued that the proceeding was not one that
required the Tribe’s presence at all, meaning sovereign immunity had
no application."

(i.e. that's what Option #6 accomplishes, removing the need to
consider immunity at all, because the dispute doesn't require the
IGO's presence if filed in rem against a domain itself)

Like in our work, they're dealing with an "edge case" that might
rarely come into play, and might end up be closed off:

"It may turn out that this dispute is irrelevant in the short term, as
after the deal was announced, a federal court invalidated the patents
(that decision is on appeal). Regardless of the outcome with respect
to the Restasis patents, however, it is clear that other patent
holders are engaging in similar deals [PDF] with sovereign tribes. EFF
is pushing back against these deals as an improper assertion of
sovereign immunity."

This also plays into the point that Paul Tattersfield has raised, i.e.
what to do with regards to IGOs who are "cybersquatting", with TM
owners being denied relief! While an IGO per se might not normally do
this, one can imagine someone creative cutting a deal with an entity
like an Indian Tribe to conduct large scale cybersquatting operations,
and then invoking immunity as a defense even from the UDRP/URS itself
(since the UDRP/URS are supposed to consider applicable national law,
e.g. see section 15(a) of the UDRP rules,

"15. (a) A Panel shall decide a complaint on the basis of the
statements and documents submitted and in accordance with the Policy,
these Rules and any rules and principles of law that it deems
applicable."

when rendering their verdicts, they might decide that the Tribe could
assert immunity withinthe UDRP/URS itself), before it ever got to a
court.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/