Authored By Haviland Macy Marie Kebler, Esq. & Manija Sidiqi
On December 6, the Department of Justice Antitrust Division, United States Patent and Trademark Office, and National Institutes of Standard and Technology (the “Agencies”) offered a Draft Revised Policy Statement on remedies for the infringement of Standards-Essential Patents (“SEP”) that are subject to Fair, Reasonable, and Non-Discriminatory (“FRAND”) licensing. A public comment period ran until February 04, 2022, allowing all stakeholders time to give input on the draft. The Draft Policy is presumably aimed to promote good-faith licensing negotiations and addresses the availability of remedies to patent owners that license their SEPs on FRAND terms.
SEPs are “a patent claiming technology that is essential to an industry standard’s use.”1 In other words, they are patents that protect an industry’s core technology or the baseline standard set to further invention and innovation. SEPs are initially a typical patent and are formally declared a “standard” by standard-setting organizations (“SSO”).2 In the standard-setting process, owners of the patent technology are sometimes involved and agree to license the technology on FRAND terms. 3 FRAND licensing terms support standardization and scalability of technology and lowers prices for consumers.4 Some common examples of SEPs are Wi-Fi, LTE and USB.
A total of 1,030 comments were received on the Draft Policy, and 167 of those are posted and available for viewing on the docket. The American Intellectual Property Law Association (“AIPLA”) is among the many organizations who submitted comments on the Draft Policy Statement. The AIPLA suggests that while the draft statement is in line with the core objectives of prior statements, the new added commentary conflicts with settled law surrounding the availability of injunctions for SEPs subject to a FRAND commitment, and requests that the prior statement stay in place. There seems to be a consensus with the AIPLA’s argument, as the Information Technology & Innovation Foundation (“ITIF”) also noted the Draft Statement does not contribute to the strengthening of intellectual property rights by overlooking the “benefits and availability of injunctive relief.”
We will continue monitoring the Department of Justice for updates on the potential implementation of the Draft Policy.