The United States Patent and Trademark Office (USPTO), jointly with the National Institute of Standards and Technology (NIST) and the U.S. Department of Justice’s Antitrust Division (DOJ) on December 19, 2019 released a Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary FRAND (Note 1) Commitments. The statement makes clear that standards-essential patents (SEPs) should be treated no differently than any other patent, such that all remedies are available depending on the facts of a case.
The new statement leaves decisions on remedies for SEPs to relevant tribunals according to generally-applicable patent laws. The statement was the result of extensive consultations with stakeholders, including diversely situated business entities and trade groups, in addition to comprehensive discussions among the signatory agencies and others in the Administration.
“The new joint statement effectively takes the government’s thumb off the scale, and is balanced and structured to incentivize technological development and growth of standards-based industries.” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu.
A previous statement (Note 2) on the matter released by the USPTO and DOJ in 2013 had been misinterpreted to suggest that different legal rules should be applied to SEPs and other patents, limiting the remedies available when SEPs are infringed. The joint statement seeks to ensure that U.S. patent law is appropriately calibrated to incentivize and protect, and not hamper, the growth of standards-based technology. Moreover, the statement sets a positive example for other jurisdictions that have sought to diminish the value of SEPs.
Note 1: The so-called FRAND principle refers to the principle that the patentee voluntarily abides by the principle of authorizing the work of his patent under fair, reasonable and non-discriminatory conditions when participating in the activities of the Standard Development Organization (SDO).
Note 2: In 2013, the USPTO and the DOJ jointly issued a policy statement, stating that under the FRAND principle, when standard-essential patents are infringed to implement exclusive remedies, in some cases it seems to be contrary to the public interest of these patents. But if the potential licensee in other situations, refuses to sign a fair, reasonable and non-discriminatory license agreement, exclusive remedies may be appropriate. Since then, the joint statement was misunderstood as an injunction and exclusive relief measures, and did not apply to standard essential patents, which caused damage to innovation and competitive vitality. Therefore, the 2013 statement was withdrawn.
Released by TIPO
