Licensing Executives Society Commends USPTO, NIST, and DOJ on SEP Policy Statement
Sunday, December 29, 2019
The Licensing Executives Society (USA and Canada), Inc. (LES) commends the work of Undersecretary of Commerce for Intellectual Property Andre Iancu, Undersecretary of Commerce for Standards and Technology Walter Copan, and Assistant Attorney General Makan Delrahim, on the joint Policy Statement of the U.S. Patent and Trademark Office (USPTO), the National Institute of Standards and Technology (NIST), and the U.S. Justice Department regarding the remedies available to owners of standard-essential patents (SEPs) where the patent holder has agreed to license its patents on fair, reasonable, and non-discriminatory (F/RAND) terms.
From its inception, the U.S. wisely and effectively encouraged innovation with a patent system that rewards inventors with a valuable personal property right. Coupled with prudent technology policy and antitrust enforcement, the U.S. has become the innovation capitol of the world. This valuable personal property right stimulated creativity, and encouraged investment in myriad enterprises from vast interrelated communications systems to lifesaving treatments and cures. Often, those investments are capital-intensive, high risk undertakings where returns are not only uncertain but many years off.
Generally, the U.S. patent system has rewarded inventors equally without regard to technological discipline. Inventors are afforded the same property right regardless whether the invention involved sophisticated, interconnected electronics, biotechnology, or household gizmos and toys. With this Joint Policy Statement, the USPTO, NIST, and DOJ make clear that the remedies available to such inventors should likewise be technologically agnostic, and without regard to how the invention is used and commercially exploited.
The right conferred by the U.S. Constitution is clear and unambiguous. It is an exclusive right, i.e., the right to exclude others from exploiting the inventor’s creation. The joint Policy Statement makes clear that right is not diminished where the invention finds use in a complicated and interrelated device or system made possible through standard setting. As the agencies made clear, there is no special set of legal rules, and the courts, the ITC, and other decision makers are able to assess appropriate remedies based on current law and relevant facts. This is as it should be, assessing legal remedies based on objective facts and the law, and without regard to broad generalizations or assumptions.
LES joins the DOJ, the USPTO, and NIST in urging that, by resort to good faith negotiations, respect for property rights, and traditional notions of fair dealing, the US will continue to be the capitol of innovation, and the center of development for sophisticated and interconnected systems and devices. Through its Standards Initiative, LES is developing voluntary, consensus-based professional practices under the American National Standards Institute’s (ANSI) Essential Requirements. LES is bringing creators and implementers together to develop business management standards in an open, inclusive, and transparent process. Those standards will facilitate successful, streamlined practices in negotiation, licensing, and valuation of all technologies, including Standard Essential Patents. For more information visit LES Standards.