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Shakeup set for essential patents in US

Business news |
By Nick Flaherty


The US Patent and Trademark Office (USPTO) is looking to change the way it handles disputes over licensing of essential patents used in standards.

The USPTO is withdrawing its 2019 advice that pushed for mediation. That 2019 statement itself superseded 2013 rules on litigation.

“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,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and new Director of the USPTO.

“Those 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,” she said, “Standards also enable small to medium-sized companies to more easily access the market, creating competition that helps drive down prices and increasing the availability of these cutting-edge technologies.”

The use of essential patents licensed on FRAND terms is key to the development of global standards around wireless communications and video technology, but are increasingly areas of friction in disputes with Chinese companies.

The USPTO had been planning to hold a consultation on the issue this month, but the level of interest has meant this has been rescheduled to 2023.

The withdrawal of the 2019 “Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments” which itself withdrew the 2013 advisory also includes not moving forward with a draft December 2021 draft statement.

In July, Vidal held discussions with the World Intellectual Property Organization (WIPO) and signed a memorandum of understanding to cooperate on the resolution of disputed SEP matters.

A first step in our collaboration with WIPO will be a webinar cosponsored by the USPTO and WIPO later this week on October 6. During the event, the WIPO Arbitration and Mediation Centre will share its experience in resolving FRAND and SEP disputes.

Vidal is also holding a SEP roundtable in Detroit with the automotive industry next week and aiming to speak at the Global FRAND and SEP Symposium on October 21.

To engage with USPTO on this, please email SEP_Policy@uspto.gov.

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