PTO Director Andrei Iancu

The USPTO has signed onto the Justice Department's rollback of guidance for standard-essential patents.

Seven years ago, DOJ's Antitrust Division and the PTO issued a policy statement advising the International Trade Commission that the public interest may preclude exclusion orders when patent holders have committed to license SEPs on fair, reasonable and non-discriminatory (FRAND) terms and implementers are willing to negotiate in good faith.

"In an era where competition and consumer welfare thrive on interconnected, interoperable network platforms, the DOJ and USPTO urge the USITC to consider whether a patent holder has acknowledged voluntarily through a commitment to license its patents on F/RAND terms that money damages, rather than injunctive or exclusionary relief, is the appropriate remedy for infringement," the 2013 guidance stated.

Antitrust division chief Makan Delrahim disavowed that guidance a year ago, and on Friday the DOJ and PTO formally withdrew it. "In the years since the 2013 policy statement issued," the agencies have heard concerns that "it's been misinterpreted to suggest that a unique set of legal rules should be applied in disputes concerning patents subject to a F/RAND commitment," the new guidance states.

"Consistent with the prevailing law and depending on the facts and forum, the remedies that may apply in a given patent case include injunctive relief, reasonable royalties, lost profits, enhanced damages for willful infringement, and exclusion orders issued by the U.S. International Trade Commission," the guidance states. "These remedies are equally available in patent litigation involving standards-essential patents."

The guidance is signed by Delrahim, PTO Director Andrei Iancu and Walter Copan, director of Commerce's National Institute of Standards and Technology. NIST had no joined the 2013 guidance.

Patent owners had argued that with exclusion orders or injunctions effectively off the table, implementers often felt free to infringe their technology and snub even reasonable license offers.

Iancu's decision will surely disappoint Apple Inc., Cisco Systems Inc., Ford Motor Co., Comcast and about two dozen other stakeholders who wrote to Iancu and Commerce Secretary Wilbur Ross in April, urging them not to sign on. "The unwarranted availability of exclusionary remedies inherently provides SEP owners the leverage to appropriate value that may be unrelated to their invention," they argued, especially once a standard becomes established and switching to another is too difficult or expensive.