The New Draft Policy Statement on SEPs

Most readers probably already are aware of this development, which took place last month while I was taking a month-long blogging break, but in any event it remains big news that I should mention here.  On December 6, the USPTO, the Antitrust Division of the Department of Justice, and the National Institute of Standards and Technology (NIST) issued a "Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary FRAND Commitments."  The draft statement, which is open for public comment through February 4, is intended to replace these agencies' 2019 Policy Statement, which in turn replaced the 2013 Policy Statement.  (For my thoughts on the 2019 Policy Statement, see here.)    As Florian Mueller has already pointed out, the new draft statement is very balanced in its approach, repeatedly stressing the need to take into account the interests of both SEP holders and implementers and to discourage opportunistic by either of them.  It also "encourage[s] parties to consider" a negotiating procedure that sounds a lot like the framework set forth by the Court of Justice for the European Union in Huawei v. ZTE, beginning with the SEP holder alerting potential licensees of the SEPs it believes are or will be infringed, etc. etc. (see pp. 5-6).  And it states, correctly, that "[w]here a SEP holder has made a voluntary F/RAND commitment, the eBay factors, including the irreparable harm analysis, balance of harms, and the public interest generally militate against an injunction" (p.9), while also cautioning that courts "review the facts in each case independently" and that injunctions "may be justifiied where an implementer is unwilling or unable to enter into a F/RAND license" (id.).  Overall it is a welcome change from the 2019 statement, which downplayed the risk of patent holdup and overstated, by means of repeated emphasis, the risk of licensee holdout.  Of course, like the previous policy statements, this one would not have the force of law--it doesn't bind the courts or the ITC--and there could be further modifications after the comments are in.  We'll see.

Also of potential interest is the U.K.'s "Standard Essential Patents and Innovation:  Call for Views," which solicits comments through March 1 on a range of questions relating to SEP licensing and litigation.