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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Standards-Essential Patents Subject to Voluntary F/RAND Commitments” (“2019 Statement”), which, in turn, had replaced a withdrawn 2013 DOJ-USPTO joint policy statement by the same title (“2013 Statement”).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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EU Rejects the Spanish Challenge to the Unified Patent Court


Time to Read: 1 minutes Practices: Intellectual Property

Today, the Court of Justice of the European Union issued its judgment, finally rejecting the "Spanish Challenge" to the Unitary Patent system (part of the Unified Patent Package, which includes the Unitary Patent Regulation, Regulation on Translations, and Unified Patent Court Agreement) signed back in December 2012. As reported previously, the Spanish challenge has been brewing since 2012, shortly after the Unified Patent Package was signed. The Spanish Challenge essentially argued that the new scheme was a breach of European Union law, and illegal, because it gave unnecessary authority to the European Patent Office and a subset of the EU member states, and because it did not integrate the Spanish language as an official language of the system.

Today's historic ruling makes a strong statement about the importance of the Unified Patent Package. The ruling states that the Unitary Patent and Unified Patent Court address “the complexity and particularly high costs of the current European patent protection system” which “affect adversely the capacity of European businesses to innovate and compete.” 

This ruling ends the debate, which began nearly 50 years ago in regard to unifying the patent system in Europe. This is the last hurdle. The system is now a-go, anticipated to start in 2016. All companies that have competitors in Europe, particularly where patents are relevant to their industry, will now need to take seriously this new court system and patent regime.

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