A Shift on Standard-Essential Patent Remedies? DOJ, USPTO, and NIST Issue New Joint Policy Statement

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On December 19, 2019, the U.S. Department of Justice’s (“DOJ”) Antitrust Division, the United States Patent & Trademark Office (“USPTO”), and the National Institute of Standards and Technology (“NIST”) issued a joint “Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments” (“2019 Statement”). The 2019 Statement replaces a withdrawn 2013 DOJ-USPTO joint policy statement by the same title (“2013 Statement”). Importantly, the 2019 Statement clarifies the agencies’ joint position that, regardless of whether particular standard-essential patents (“SEPs”) are the subject of F/RAND (Fair, Reasonable, and Non-Discriminatory) licensing commitments, whether injunctive relief is available to SEP owners is governed by the same principles that govern non-SEPs. Notably, like the 2013 Statement it replaces, the new 2019 Statement was issued just months before an anticipated decision from the International Trade Commission (“ITC”) regarding whether to exclude infringing products from the United States based on the infringement of a FRAND-encumbered SEP.