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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Standards-Essential Patents Subject to Voluntary F/RAND Commitments” (“2019 Statement”), which, in turn, had replaced a withdrawn 2013 DOJ-USPTO joint policy statement by the same title (“2013 Statement”).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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First in Three-Part Roll-Out of AIA Rule Changes Announced, Including Page Limits for Petitioner Replies and Patent Owner Motions to Amend


Time to Read: 1 minutes Practices: Intellectual Property, Intellectual Property Litigation, Intellectual Property Transactions, Patent Trial & Appeal Board (PTAB) Proceedings, Patent Strategy

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March 27, 2015 – In a blog post today, U.S. Patent and Trademark Office (“PTO”) Director Michelle K. Lee announced plans for a three-part roll-out of changes to the rules governing America Invents Act (“AIA”) post-grant proceedings, with the first including “‘quick fixes’ – changes of simple scope that will immediately improve the trial proceedings.” According to Director Lee’s announcement, these include increasing the page limits for Petitioner Replies and Patent Owner Motions to Amend filed in connection with AIA proceedings, including covered business method reviews and inter partes reviews. 

The Director stated that the PTO will be increasing the page limits for Petitioner Replies and Motions to Amend from 15 to 25 pages. Although this modification to AIA proceedings will officially issue in a package of “quick fix” rule changes that will be promulgated later this spring, the announcement stated that Administrative Patent Judges of the Patent Trial and Appeal Board will begin implementing them “effective immediately” through scheduling orders. 

The PTO Director’s announcement also confirmed that it expects to issue a second rule-making package this summer. In connection with the second package, the announcement states that the PTO is considering changes to the requirements for motions to amend, modifications to the type of evidence that can be relied on to support the Patent Owner Preliminary Response, and clarification of the claim construction standard applicable to expired patents challenged in AIA proceedings, along with several other changes. 

Director Lee announced that the PTO also expects to revise its Trial Practice Guide, including to “emphasize the availability of live testimony” at oral hearings upon the grant of a motion for such testimony, and the “importance of . . . discovery” about the real-party-in-interest.

Director Lee’s blog post is available here. To discuss further the potential impact of the new rules, please contact your usual Ropes & Gray attorney.


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