Deadline for Comments on USPTO RFC on Standards and IP Extended

The U.S. Patent and Trademark Office (USPTO) has extended the deadline for comments on its joint request for comments (RFC) with the International Trade Administration (ITA) and the National Institute for Standards and Technology (NIST) on the agencies’ collaboration initiative concerning standards and intellectual property.

In a Federal Register Notice (FRN) published today, the USPTO announced the new deadline will be November 6, 2023. The original deadline was September 29.

According to the FRN, the three agencies are “seeking stakeholder input on the current state of U.S. firm participation in standard setting, and the ability of U.S. industry to readily adopt standards to grow and compete, especially as they relate to the standardization of critical and emerging technologies.” The agencies are particularly interested in these issues as they relate to small and medium enterprises (SMEs), which are encouraged to self-identify in their submissions. The deadline extension is meant “to ensure that stakeholders have a sufficient opportunity to submit written comments.”

As part of the information gathering process, the USPTO held a Listening Session on the topic last week. A number of implementer organizations testified, as did industry representatives such as the Innovation Alliance and the Center for Strategic and International Studies (CSIS). The latter testimony is one of three comments that have been posted so far to the Regulations.gov site under the RFC; Microsoft and a “multistakeholder group” that includes ACT | The App Association; the Alliance for Automotive Innovation; the Computer and Communications Industry Association; the Public Interest Patent Law Institute; and Save Our Standards are the other two.

The CSIS testimony, which was delivered by Dr. Kirti Gupta, CSIS Senior Advisor, explained that standardized technologies, such as 5G, “are highly complex requiring teams of highly skilled engineers for firms to have meaningful R&D programs and presence in international standards bodies.” The ability to license patents as a means of recovering their investments is a key reason such companies invest in R&D and participate in standards, Gupta’s testimony added.

But Microsoft’s testimony said there is not enough transparency in standard essential patents (SEPs) licensing and that the United States should require SEP licenses to be “disclosed, published, and stored in a publicly accessible database” in order to ensure more efficient and less litigious negotiations. The comments also suggested the United States should support the European Union’s controversial proposed rules on SEPs , which were officially introduced in April and would hand over a great deal of regulatory power to the European Union Intellectual Property Office (EUIPO) to intervene in commercial licensing disputes over telecommunications and other standardized technologies that are covered by SEPs.

Some of the 12 questions posed in the RFC include:

Do the intellectual property rights policies of foreign jurisdictions threaten any of U.S. leadership in international standard setting, U.S. participation in international standard setting, and/or the growth of U.S. SMEs that rely on the ability to readily license standard essential patents? ….

Are current fair, reasonable, and non-discriminatory (FRAND) licensing practices adequate to sustain U.S. innovation and global competitiveness? Are there other international models which would better serve U.S. innovation in the future? ….

Do policy solutions that would require SEP holders to agree collectively on rates or have parties rely on joint negotiation to reach FRAND license agreements with SEP holders create legal risks? Are there other concerns with these solutions? ….;

and

What can the Department of Commerce do to help facilitate the efficient resolution of FRAND disputes? What can the Department of Commerce do with the World Intellectual Property Organization and/or standard setting bodies to promote alternative dispute resolution to more efficiently resolve FRAND disputes?

Comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov. Enter docket number PTO–C–2023–0034 on the homepage and select “search,” find the docket and select the “comment” icon, then complete the required fields and enter or attach your comments.

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