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Federal Agencies Issue New Draft Policy Statement Regarding Standard Essential Patent Licensing and Remedies, DOJ Seeks Public Comments

On December 6, 2021, the U.S. Department of Justice (“DOJ”) announced a request for public comments on a new “Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments” (“Draft Statement”). The Draft Statement is a joint policy statement of the DOJ Antitrust Division, U.S. Patent and Trademark Office (“USPTO”), and National Institute of Standards and Technology (“NIST”), issued in response to President Biden’s July 9, 2021 Executive Order on Promoting Competition in the American Economy. Therein, the President encouraged the Attorney General and the Secretary of Commerce to consider whether to revise the joint DOJ-USPTO-NIST 2019 “Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments” (“2019 Statement”), which, in turn, had replaced a withdrawn 2013 DOJ-USPTO joint policy statement by the same title (“2013 Statement”). All three statements address whether and under what circumstances the owners of standard essential patents (“SEPs”) who agree to license essential technology on fair, reasonable, and non-discriminatory (“FRAND”) terms should be entitled to injunctive relief. The Draft Statement signals a return to the general policy of the 2013 Statement, leaning against the availability of injunctive relief where certain implementers—so called “willing licensees”—agree to take licenses on FRAND terms. The Draft Statement does, however, set out various circumstances in which an implementer who is unwilling to take such a license could face injunctive remedies (or the possibility of enhanced damages for willful infringement).

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Unified Patent Court – Status Update


Time to Read: 1 minutes Practices: Intellectual Property

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Status – “No earlier than late 2015”

As reported earlier the new UPC will go live after 13 member states in the EU, including the UK, France and Germany, ratify the agreement.

As of October 1, 2014, Austria, Belgium, Denmark, France and Sweden have all fully ratified the Agreement. Many other EU countries are planning to establish a division. Ratification appears to be a mere formality, at this point. Aside from the Spanish Challenge (see below), the primary steps to going live appear to be logistical, including the IT structure and funding allocations and cost determinations. We expect more details on these issues soon.

The latest news from the Preparatory Committee is that the new system will come on line “no sooner than late 2015”  – roughly a year from now.

Selection of judges

Over 1300 candidates have applied to become judges in the UPC. The Preparatory Committee approved its initial list of candidates in July 2014. Of the candidates, 170 were identified as legally qualified and eligible, with 340 additional technically qualified judges. We’re hearing that the eligible candidates are very strong, which should bode well for the new court.

The judge Training Centre was opened in Budapest on March 13, 2014. The EPO will have an active role in training the judges.  

Spanish challenge at the CJEU

On July 1, 2014 the Court of Justice of the European Union (CJEU) heard the second legal action brought by Spain, challenging the legality of the new UPC. The CJEU Advocate General is expected to give his opinion on October 21, 2014, with the Court expected to render its final decision towards the end of the year. The first action was denied in April 2013. Preparations for the court are being made in Europe as if this second challenge will also be denied; but we won’t know with certainty until the decision is handed down. 

Draft Rules of Procedure of the UPC

The 17th draft Rules of Procedure are expected to be published before the end of 2014 with a public hearing to be held in November or December. The same “hot topics” at issue in the prior drafts are still alive -- opt-out, language requirements, bifurcation, injunctions, and appeals. Watch for more information from R&G about these issues!

Click here to learn more about the UPC and its implications for U.S. companies.

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