St. Regis Mohawk Tribe acquires drug patents in attempt to end legal dispute

Friday, September 8, 2017  

The St. Regis Mohawk Tribe is entering the pharmaceutical industry in hopes of ending a legal challenge over a popular dry-eye drug.

The tribe acquired all patents associated with RESTASIS® in a deal worth an immediate $13.75 million. By licensing the product back to Allergan, the original developer, the tribe could see up to $15 million in royalties a year.

"This is a viable and sound opportunity for the Saint Regis Mohawk Tribe to enter into the patent, technology and research sector as part of our overall economic diversification strategy," the tribal council said in a press release on Friday. "We realize that we cannot depend solely on casino revenues and, in order for us to be self-reliant, we must enter into diverse business sectors to address the chronically unmet needs of the Akwesasne community; such as housing, employment, education, healthcare, cultural and language preservation."

Allergan described the deal as a "sophisticated opportunity" that will protect the RESTASIS® patents from a challenge before the U.S. Patent Trial and Appeal Board. The tribe plans to assert sovereign immunity in the proceeding in hopes of having it dismissed.

"We are impressed with the tribe's thoughtful and enterprising approach, which will allow them to achieve their goals of self-reliance and help them address the most urgent needs in their community," Bob Bailey, the company's chief legal officer, said in the press release.

According to Allergan, entities with sovereign immunity are protected from administrative patent challenges. The firm cited two recent cases, Covidien LP v. University of Florida Research Foundation Inc. and Neochord, Inc. v. University of Maryland in which universities asserted sovereign immunity because they are arms of their respective state governments.

The deal, however, does not impact a different legal proceeding affecting the RESTASIS® patents. A trial in federal court in Texas concluded just last week.

Allergan is headquartered in Ireland and has commercial operations in about 100 countries, including the United States.