Washington, DC - Today the Justice Department, U.S. Patent and Trademark Office (USPTO), and National Institute of Standards and Technology (NIST) issued a joint policy Statement regarding the treatment of standard-essential patents (SEP) where the patent holder has agreed to license its patents on fair, reasonable, and non-discriminatory (F/RAND) terms.  This Statement replaces the 2013 policy statement on SEP remedies issued jointly by the Department of Justice and USPTO. 

“Consistent with Article I, Section 8 of the U.S. Constitution, our patent system rewards inventors with an exclusive right to practice their inventions for a limited time,” said Assistant Attorney General Makan Delrahim of the Justice Department’s Antitrust Division.  “Today’s Policy Statement recognizes that when licensing negotiations fail, appropriate remedies for patent infringement, including injunctive relief, should be available to SEP holders.  The availability of the full range of remedies is necessary in order to preserve competition and incentives for innovation, and for continued participation in standards-setting activities, which can produce substantial benefits for American consumers.” 

To this end, the Statement clarifies that a patent owner’s promise to license a patent on F/RAND terms is not a bar to obtaining any particular remedy, including injunctive relief.  The agencies make clear that no “special set of legal rules” apply to SEPs, and the courts, the U.S. International Trade Commission, and other decision makers are able to assess appropriate remedies based on current law and relevant facts.  According to the Statement, “The particular F/RAND commitment made by a patent owner, the [standard development organization’s] intellectual property policies, and the individual circumstances of licensing negotiations between patent owners and implementers all may be relevant in determining remedies for infringing a standards-essential patent, depending on the circumstances of each case.”

The Statement follows the Justice Department’s withdrawal from the 2013 SEP policy statement, which had been construed incorrectly as suggesting that special remedies applied to SEPs and that seeking an injunction or exclusion order could potentially harm competition. 

“Our patent system is what has made the American economy the innovation capital of the world, and we should not misapply the antitrust laws to diminish the incentive to innovate,” said Assistant Attorney General Delrahim.

Since that announcement, many industry participants and policymakers have provided input to the agencies as they prepared the new Statement. 

“We value the input provided across the industry and policy spectrum as the agencies drafted a new Statement, in particular the input from Senate Intellectual Property Committee Chairman Thom Tillis and Ranking Member Chris Coons,” said Assistant Attorney General Delrahim.  “As the new Statement emphasizes, ultimately, there is no special set of remedies for standard-essential patents.  All patent owners have a statutory right to seek injunctive relief, and this joint statement reaffirms that if they do so the agencies will not put a thumb on the scale against them.”