The United States Patent and Trademark Office (USPTO) announced the formation of the Standard-Essential Patent (SEP) Working Group, which will report directly to USPTO Director John A. Squires. The initiative aims to examine policy issues related to patents incorporated into technical standards and provide guidance on enforcement and licensing practices.

Background

Technical standards underpin many modern technologies, including telecommunications, automotive systems, and artificial intelligence. These standards often include patented technologies, which represent significant investment by inventors. Concerns have emerged about the predictability of remedies and the treatment of patent holders within the SEP ecosystem.

Historically, injunctions in SEP disputes have been difficult to obtain in the United States because SEP patents are typically subject to fair, reasonable, and non-discriminatory (FRAND) commitments. FRAND obligations are intended to ensure broad access to standardized technologies, but they often create uncertainty around enforcement and limit the availability of injunctive relief. This tension has led to debates over whether SEP holders can effectively prevent infringement when licensing negotiations fail.

Recent USPTO actions

The USPTO’s announcement follows its recent involvement in cases addressing patent remedies, in which the USPTO argued that injunctions should be available for SEP patents. In Radian Memory Systems v. Samsung Electronics, the USPTO filed a statement emphasizing the role of injunctions in protecting patent rights. Similarly, in an International Trade Commission investigation involving dynamic random-access memory (DRAM) devices, the USPTO commented on the public interest in enforcing valid patents. Both of these cases involved the assertion of SEP patents.

Objectives of the SEP Working Group

The working group will focus on three areas:

1. Clarifying enforcement standards: Reviewing approaches to ensure strong and predictable remedies for SEP holders.
2. Encouraging broader participation: Exploring ways to enable small and medium-sized enterprises to engage in standards development.
3. Stakeholder engagement and transparency: Creating dialogue with patent holders, implementers, and standards organizations to identify challenges and develop resources for licensing predictability.

USPTO Deputy General Counsel Nicholas Matich and Senior Legal Advisor Austin Mayron will co-chair the working group. The group will seek input from stakeholders across the innovation ecosystem.

Next steps

The USPTO intends for this initiative to formalize its recent policy efforts and provide a structured approach to SEP-related issues. Stakeholders are encouraged to participate in discussions as the group begins its work.