Thursday 2 January 2020

U.S. Agencies Release Policy Statement Concerning Remedies and SEPs

The United States Patent and Trademark Office, the U.S. National Institute of Standards and Technology, and the U.S. Department of Justice, Antitrust Division, (collectively, the agencies) have issued a policy statement concerning remedies and standard essential patents.  Importantly, the agencies have rejected the prior 2013 policy statement in favor of a policy statement that expressly recognizes that all remedies, including injunctive relief and exclusion orders at the International Trade Commission, are available for infringement of a standard essential patent.  Notably, the agencies primarily rely on U.S. case law to support its decision and OMB Circular A-119.  The policy statement provides, in part: 

Of course, the particular F/RAND commitment made by a patent owner, the SDO’s intellectual property policies, and the individual circumstances of licensing negotiations between patent owners and implementers all may be relevant in determining remedies for infringing a standards-essential patent, depending on the circumstances of each case.  Further, individual parties may voluntarily contract for or agree to specific dispute resolution mechanisms. 

In the Agencies’ view, courts, the U.S. International Trade Commission, and other decision makers in their discretion should continue to consider all relevant facts, including the conduct of the parties, when evaluating the general principles of law applicable to their remedy determinations involving standards-essential patents, such as the factors enumerated in eBay or 19 U.S.C. § 1337, as appropriate. The courts are “more than capable of considering these factual issues” when deciding whether to award remedies for infringement.20 In the Agencies’ view, courts—and other relevant neutral decision makers—should continue to determine remedies for infringement of standards-essential patents subject to F/RAND licensing commitments pursuant

to the general laws. A balanced, fact-based analysis, taking into account all available remedies, will facilitate, and help to preserve competition and incentives for innovation and for continued participation in voluntary, consensus-based, standards-setting activity.

The policy statement is available, here

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