Public Comments — Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents

The Department of Justice, United States Patent and Trademark Office, and National Institute of Standards and Technology are accepting public comment on a new draft policy statement concerning licensing negotiations and remedies for standards-essential patents (SEPs).

December 6, 2021

Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments

December 6, 2021

Press Release: Public Comments Welcome on Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to F/RAND Commitments

December 13, 2021

Press Release: Deadline Extended for Submitting Comments on Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to F/RAND Commitments

The new draft policy statement seeks to promote good-faith licensing negotiations and addresses the scope of remedies available to patent owners that have agreed to license their essential technologies on reasonable and non-discriminatory or fair, reasonable, and non-discriminatory (F/RAND) terms. The new draft policy statement for public comment is issued in response to President Biden’s recent Executive Order on Promoting Competition in the American Economy, which encouraged the Agencies to review the 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments to ensure that it adequately promoted competition.

The Agencies are seeking public input on the following questions:

  1. Should the 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments be revised?

  2. Does the draft revised Statement appropriately balance the interests of patent holders and implementers in the voluntary consensus standards process, consistent with the prevailing legal framework for assessing infringement remedies?

  3. Does the draft revised Statement address the competition concerns about the potential for extension of market power beyond appropriate patent scope identified in the July 9, 2021 Executive Order on Promoting Competition in the American Economy?

  4. In your experience, has the possibility of injunctive relief been a significant factor in negotiations over SEPs subject to a voluntary F/RAND commitment? If so, how often have you experienced this?

  5. Are other challenges typically present in negotiating a SEP license? If so, what information should be provided or exchanged as a practical matter to make negotiation more efficient and transparent?

  6. Are small business owners and small inventors impacted by perceived licensing inefficiencies involving SEPs? If so, how can licensing be made more efficient and transparent for small businesses and small inventors that either own, or seek to license, SEPs?

  7. Will the licensing considerations set forth in the draft revised Statement promote a useful framework for good-faith F/RAND licensing negotiations? In what ways could the framework be improved? How can any framework for good-faith negotiations, and this framework in particular, better support the intellectual property rights policies of standards-setting organizations?

  8. What other impacts, if any, would the draft revised Statement have on standards-setting organizations and contributors to the standards development process?

  9. The draft revised Statement discusses fact patterns intended to indicate when a potential licensee is willing or unwilling to take a F/RAND license. Are there other examples of willingness or unwillingness that should be included in the Statement?

  10. Have prior executive branch policy statements on SEPs been used by courts, other authorities, or in licensing negotiations? If so, what effect has the use of those statements had on the licensing process, outcomes, or resolutions?

  11. Are there resources or information that the United States Government could provide/develop to help inform businesses about licensing SEPs subject to a voluntary F/RAND commitment?

Interested parties, including attorneys, economists, academics, consumer groups, industry stakeholders, or other members of the public, may submit public comments to Regulations.gov until February 4, 2022. Submitted comments will be made publicly available on Regulations.gov. Comments will also be made available on this web page after the comment period closes. For questions, contact Jennifer Dixton, Assistant Chief, Special Counsel for Intellectual Property, Competition Policy and Advocacy Section.

Privacy and confidentiality: Written submissions and the identity of the submitter may be disclosed, reproduced, and distributed by publication and/or posting on Regulations.gov. Information that is submitted in connection with this event cannot be maintained as confidential by the Department of Justice. Written submissions should not include any information that the submitting person seeks to preserve as private or confidential.

Copyrighted Material: The Department of Justice will not post copyrighted material included in comments on Regulations.gov without permission from the copyright owner(s).

Updated December 13, 2021

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