SEP bans unhelpful: US

Bloomberg

Thu, Jan 10, 2013 - Page 15

Banning imports of products based on their use of patents in industry standards may not be in the public interest, US President Barack Obama’s administration said in a policy paper.

The paper, released on Tuesday by the US Department of Justice and the US Patent and Trademark Office, says that, in some instances patent owners should not be allowed to block sales or imports of products based on the use of standards that help products from different manufacturers work together.

The US Federal Trade Commission, which reached a consent agreement with Google Inc last week restricting its use of standard-essential patents, has taken a similar position.

The paper puts added pressure on the US International Trade Commission (ITC), which is considering the issue as part of a request by Samsung Electronics Co to halt imports of Apple Inc products made in Asia. A final decision is expected on Feb. 6.

The ITC’s approach “will be important to the continued vitality of the voluntary consensus standards-setting process and thus to competitive conditions and consumers in the United States,” the two agencies wrote, without citing specific cases.

The agencies, in a joint policy paper, said that, while patent owners have the right to exclude others from using their inventions, the public benefit of allowing that is limited when it comes to so-called standard-essential patents (SEPs).

The Washington-based trade commission is investigating other complaints filed by owners of SEPs, including one by Google’s Motorola Mobility unit against Microsoft Corp, an InterDigital Inc case against Huawei Technologies Co (華為) and one filed by Ericsson AB against Samsung.

Companies participate in groups to establish technical specifications that can be used across platforms for things like how video images are transmitted or what type of plug is used for phone chargers. Those who establish the standards pledge to license any relevant patents on fair, reasonable and non-discriminatory terms, or FRAND.

The Department of Justice and patent office laid out guidelines that should be met before an exclusion order is granted by the trade commission. The agencies said the standard also should apply in district court lawsuits.

Judges in Seattle and Chicago have already said Motorola Mobility is not entitled to orders halting US sales of products based on the use of standard-essential patents.