USPTO and DoJ urge caution over FRAND injunctions

The US Department of Justice (DoJ) has warned the International Trade Commission (ITC) to be cautious before it blocks imports of goods that infringe industry-essential patents.

In a joint policy statement with the US Patent and Trademark Office (USPTO), published on January 8, the DoJ says an injunction’s effect on public health and competition must be the ITC’s “overriding consideration” before it grants one.

The statement adds that they support IP protection and believe that a patent holder who commits to an agreement covering industry-essential patents should “receive appropriate compensation”.

The standards-essential patents in question are licensed on fair, reasonable and non-discriminatory grounds (FRAND).

In the report, the USPTO and the DoJ offer their support for FRAND agreements, saying that they increase further innovation and encourage patent holders to contribute their best technology to the process.

The report highlights that in some circumstances, using an injunction or exclusion order may be inconsistent with the public interest, especially when the infringer is acting within the scope of the patent holder’s FRAND commitment and is able, and has not refused, to license on FRAND terms.

“This concern is particularly acute in cases where an exclusion order based on a F/RAND-encumbered patent appears to be incompatible with the terms of a patent holder’s existing F/RAND licensing commitment to an SDO (standards-developing organisations).”

“The DOJ and USPTO urge the US ITC 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 report comes as the ITC is investigating a request (covering FRAND patents) from Samsung to ban certain Apple products made in Asia. The agency is looking into other complaints filed by owners of FRAND patents, including one by Ericsson against Samsung. It is believed, however, that the parties in this case are poised to settle their dispute.

Google had asked the ITC to block imports of Microsoft products that it said infringed patents held by subsidiary Motorola Mobility, but has since withdrawn the aspects of the complaint that cover standards-essential patents. The request follows the conclusion of a 19-month investigation by the US Federal Trade Commission that found the company had not met the conditions of fair, reasonable and non-discriminatory patent licensing since purchasing Motorola in August 2012.

You can view the statement here.