Standard essential patent policy and practices: We want to hear from you!
Blog by Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO
Technical standards play a critical role in our daily lives. From the phones in our pockets to the computer networks that support our communications with colleagues and family, standardized technology has brought many benefits to society.
Technical standards are most effective when innovators commit their patented technologies to the standard, agreeing to license those patents on “fair, reasonable, and nondiscriminatory” (FRAND) terms. Those patents — standard essential patents (SEPs) — are necessary to practice a given technical standard. By agreeing to license patents on FRAND terms, the patentee is compensated by licensees for their contributions while facilitating the implementation of the standard more broadly in society and across the globe. Standards also enable small to medium-sized companies to more easily access the market, creating competition that helps drive down prices for Americans and increasing the availability of these cutting-edge technologies.
From the moment I took the helm at the USPTO, standards policy as it relates to intellectual property has been one of my key priorities. In June, the USPTO, along with the National Institute of Standards and Technology (NIST) and the Antitrust Division of the Department of Justice (DOJ), announced the withdrawal of the 2019 “Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments.” After considering public input on the 2019 Statement and possible revisions, our three agencies concluded that withdrawing the 2019 statement (and not moving forward with the draft December 2021 draft statement) was the best course of action for promoting both competition and innovation in the standards ecosystem. Though our agencies agreed to withdraw the statement, our work was not done.
In July, I held discussions with the World Intellectual Property Organization (WIPO) on the margins of its annual Meetings of Assemblies in Geneva. There, the USPTO signed a memorandum of understanding with WIPO to cooperate on activities that will lend efficiency and effectiveness to the resolution of disputed SEP matters, by leveraging existing resources of the USPTO and the WIPO Arbitration and Mediation Center. During my recent trip to Asia, I also spoke with my counterparts in Singapore and other ASEAN countries on patent valuation and building out arbitration procedures and processes with stakeholders.
A first step in our collaboration with WIPO will be a webinar cosponsored by the USPTO and WIPO on October 6. During the event, the WIPO Arbitration and Mediation Center will share its experience in resolving FRAND and SEP disputes.
On October 11, I will participate in an SEP roundtable in Detroit with the automotive industry. I also look forward to speaking at the Global FRAND and SEP Symposium on October 21, alongside Lisa Jorgenson, Deputy Director of the Patents and Technology Sector at WIPO.
I am very interested in hearing more from stakeholders on the role the USPTO can play to support them in the standards space. To this end, we are also planning a broader stakeholder session titled “Innovating ideas around standard essential patents.” The event, originally scheduled for October 18, is postponed to accommodate greater in-person attendance and to allow us to hear from all interested stakeholders, including a diverse cross-section of the SEP community. The USPTO is looking to reschedule the event in 2023. Keep an eye out for a future announcement. We are taking an all-of-government approach and will announce additional upcoming engagement opportunities soon.
Meanwhile, if you have any questions or would like to engage on this topic, please email SEP_Policy@uspto.gov.