Restoring Injunctive Relief for Standard Essential Patent Holders

Friday, Feb 14th, 2020

A new Joint Policy Statement by the Department of Justice (DOJ), U.S. Patent and Trademark Office (USPTO) and the National Institute of Standards and Technology (NIST) restored an important patent protection for standard-essential patent (SEP) holders, the right to injunctive relief. SEPs are patents for certain critical technologies that are determined to set the standard for an industry. In exchange for being designated as a SEP, the SEP holder must agree to license its patent on fair, reasonable and non-discriminatory (FRAND) terms.

Unfortunately, a 2013 Joint Policy Statement was interpreted to deny SEP holders the right to seek an injunction or exclusion order when their patent was infringed. That radically changed the negotiating dynamic between SEP holders and SEP users that had worked well for decades and produced tremendous results, including giving rise to the smart phone revolution. Without the ability to enforce a patent, SEP holders are forced into an extremely weak negotiating position against SEP users, whose prime objective is to pay as little as possible, if at all, to use the SEP.

Under the new Joint Policy Statement, the agencies clarify that when licensing negotiations fail, appropriate remedies for patent infringement, including injunctive relief, should be available to SEP holders. Innovation Alliance (IA) Executive Director, Brian Pomper, summed up the importance of this reversal in a statement:

“This is exactly the kind of change we need to strengthen our patent system and ensure it continues to serve as an engine for innovation, job creation and economic growth in the United States.”

The agencies should be commended for making this change. 


Are you concerned about the current state of the U.S. patent system? Read our blog post about the STRONGER Patents act, a bipartisan bill that would strengthen our patent system and support American inventors.

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