US Issues Statement On Injunctions In Cases Of Standards Essential Patents

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The United States Patent and Trademark Office and US Department of Justice yesterday issued a joint policy statement on standards essential patents that encourages voluntary technology licensing on fair, reasonable and non-discriminatory terms, and discourages injunctions or exclusionary orders that block infringing products from the market. Their advice to the International Trade Commission cites innovation, competition, consumers and the public interest.

“In light of these and other potential benefits, the United States continues to encourage systems that support voluntary F/RAND licensing – both domestically and abroad – rather than the imposition of one-size-fits-all mandates for royalty-free or below-market licensing, which would undermine the effectiveness of the standardization process and incentives for innovation,” the statement says.

They added later: “A decision maker could conclude that the holder of a F/RAND-encumbered, standards-essential patent had attempted to use an exclusion order to pressure an implementer of a standard to accept more onerous licensing terms than the patent holder would be entitled to receive consistent with the F/RAND commitment—in essence concluding that the patent holder had sought to reclaim some of its enhanced market power over firms that relied on the assurance that F/RAND-encumbered patents included in the standard would be available on reasonable licensing terms under the SDO’s policy.” An SDO is a standards development organisation.

But the agencies provide balance by clarifying that: “Although we recommend caution in granting injunctions or exclusion orders based on infringement of voluntarily F/RAND-encumbered patents essential to a standard, DOJ and USPTO strongly support the protection of intellectual property rights and believe that a patent holder who makes such a F/RAND commitment should receive appropriate compensation that reflects the value of the technology contributed to the standard.”

The 10-page policy statement is available here [pdf].

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