Director Vidal's Comments on SEPs at the Berkeley-Stanford Advanced Patent Law Institute

Kathi Vidal, Director of the U.S. Patent and Trademark Office, spoke today at the Berkeley-Stanford Advanced Patent Law Institute held at Stanford Law School along with Konstantinos Georgaras, CEO of the Canadian IP Office.  It was an interesting chat all around with a good discussion of each office’s diversity efforts, encouragement of underrepresented communities not only to file applications but to continue with them after a preliminary rejection and a lot on AI and the challenges facing the offices' in dealing both with innovations in the AI space and with what is created by AI entities. There was also a discussion about standards and standard essential patents.  Here’s some of what was said about SEPs.

Director Vidal mentioned that one of her first acts with respect to standards was to withdraw the 2019 policy statement.[1] The 2019 policy statement (officially the “Policy Statement on Remedies For Standards-Essential Patents Subject To Voluntary F/Rand Commitments”) was a joint statement of the USPTO, NIST and the Antitrust Division of the US Department of Justice.[2]  The 2019 policy statement reflected the Trump administration’s thoughts about standards and SEPs, and heavily favored the rights of SEP holders to seek injunctions at the expense of implementers and the public. 

The 2019 policy statement included a withdrawal of the 2013 policy statement that had been released by the USPTO and the Antitrust Division of the US Department of Justice.[3]  The 2013 statement had suggested that, generally, the public interest in implementation of standards would weigh against the granting of exclusion orders or injunctions for SEPs, and that caution should be exercised before any such grant.  Director Vidal explained that, in withdrawing the 2019 statement, they did not reinstate the 2013 statement because that earlier statement had been used against U.S. interests abroad (she did not elucidate in what way).

She also discussed the work the U.S. PTO is doing with other US and international agencies. To quote Director Vidal, the PTO is “leaning in” on international cooperation on SEP issues. They have people working in the EU and other places, and three attachés in China. This coordinated work includes trying to develop a forum for fair and efficient resolution of world-wide SEP licensing matters.  For example, she mentioned that they are working with others to develop a SEP arbitration forum in Singapore. 

Mr. Georgaras spoke about the study his office did on world-wide SEP filings.[4]  He stated that the growth of SEPs over the years has been amazing.  He also said that, according to their study, about 80% of the SEP filings are in the telecom space, and most of those patents are held by companies in China, the U.S. and Japan.  The Canadian Patent Office is also working with their international counterparts to develop a forum for dispute resolution in SEP matters.  They are pushing WIPO to explore how best to do this. 

In response to an audience question about 5G, Director Vidal said she was well aware of the landscape in 5G and related technologies such as openRAN and other alternatives.[5]  She mentioned that there is government focus on these technologies in part because these technologies impact national security interests. 

Finally, she mentioned that they are focused on the entirety of the SEP landscape and are working to ensure the US continues to lead, not just in the development of standards, but also in their implementation.  She said that we need all companies, including start-ups, to have be able to easily access and implement standards to ensure that U.S. companies can thrive.

We certainly all look forward to hearing more about these efforts.

[1]          You can find the withdrawal here: Withdrawal of 2019 Policy Statement on Remedies for Standards-Essential Patents (uspto.gov).

[2]          You can find the 2019 statement here: 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/Rand Commitments issued by the United States Patent & Trademark Office, National Institute of Standards and Technology and United States Department of Justice.

[3]          You can find the 2013 statement here: Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments (justice.gov).

[4]          You can find study results here: IP Canada Report 2021 The growth of standard-essential patents and Blog – Standard Essential Patents: Insights from patent data (canada.ca).

[5]          Here’s some information about OpenRAN: OpenRAN - Telecom Infra Project