SEP Working Group to Continue USPTO’s Efforts Supporting Injunctive Relief for SEP Owners

On Monday, the U.S. Patent and Trademark Office (USPTO) announced that the agency has established a Standard-Essential Patent (SEP) Working Group to develop and deliver meaningful policy solutions on SEP-related issues. The working group, which will report to USPTO Director John Squires, will play a role in advancing the Office’s engagement with patent remedies and enforcement in furtherance of the pro-innovation stance the agency has taken on SEP cases before the U.S. International Trade Commission (USITC) and in U.S. district court.

USPTO Urges Injunctive Relief Regardless of Whether SEP Owner Practices Technology

Although technological standards form the backbone of many critical telecommunications and data networking technologies, the USPTO’s press release noted that the SEP ecosystem has become increasingly hostile to patent owners in recent years. Courts around the world are awarding anti-suit injunctions and interim licenses that have led to favorable outcomes for standards implementers, often justifying those decisions based upon the SEP owner’s fair, reasonable and non-discriminatory (FRAND) licensing obligations created but not enforced by the standard developing organization (SDOs).

Government regulators have also proposed frameworks meant to improve transparency around SEP licensing but which have faced criticism for increasing burdens on SEP owners. This past June, the UK Intellectual Property Office (UKIPO) announced a consultation on SEP matters including a proposal to create a Rate Determination Track that would have administratively determined FRAND licensing rates through agency proceedings. Commentators have pointed out the UKIPO’s lack of empirical evidence of patent holdup caused by SEP injunctions and overlooks the successes patent pools have seen in licensing SEP portfolios to implementers.

By contrast, the USPTO’s SEP Working Group will explore policy pathways to improve meaningful enforcement of patent protections for SEP owners from Fortune 500 companies to garage inventors. The USPTO noted that this group will continue the agency’s efforts to support SEP injunctions through the filing of court statements like the statement of interest filed in Radian Memory Systems v. Samsung Electronics this past June. In that case, involving SEPs claiming management of flash solid-state devices, the USPTO urged that the Eastern District of Texas make injunctive relief available on Radian’s motion for preliminary injunction. Acknowledging that “irreparable harm is common in patent infringement cases because patents are hard to value and damages are difficult to calculate,” the USPTO told the district court that a reasonable royalty is inadequate even when the SEP owner doesn’t practice the patented technology.

SEP Working Group to Create Dialogue Channels, Restore Robust Patent Remedies

The USPTO has also advocated for SEP owners in Section 337 proceedings at the USITC. In an investigation into accused Samsung dynamic random access memory (DRAM) devices, the USPTO filed a joint public interest comment with the U.S. Department of Justice that heavily underscored the importance of injunctive relief in protecting the public’s interest in protecting inventive technology. The agency further urged the USITC not to cite public interest factors in a way that could prevent the USITC from instituting Section 337 proceedings on otherwise meritorious complaints filed by SEP owners.

The recently established SEP Working Group will focus its efforts on three core objectives, according to the USPTO’s announcement. First, the group will explore avenues for restoring robust patent remedies and clarify that valid patent rights deserve predictable enforcement. Second, to facilitate meaningful participation in standards development, the working group will explore mechanisms to enable broader participation in SDOs, especially by small- and medium-sized enterprises (SMEs). Finally, the group will create channels for dialogue across SDO stakeholder groups and develop resources to increase transparency in SEP licensing negotiations.

One Million eGrants

In a separate announcement made on Tuesday, the USPTO also celebrated its one millionth patent eGrant as a major milestone in agency modernization. The USPTO noted that patent eGrants offer faster protection, streamlined publication times, simplified digital records management and enhanced security on patent documents that can be shared immediately across the globe.