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On December 29, the U.S. Patent and Trademark Office (USPTO) announced the creation of a Standard-Essential Patent (SEP) Working Group. Deputy General Counsel for Intellectual Property Law, Solicitor Nicholas Matich, and Senior Legal Advisor Austin Mayron will Co-Chair the SEP Working Group. The SEP Working Group will report directly to Director John Squires.  USPTO officials say the move is designed to spur innovation and ensure that all inventors have equal access to patent protections, and they welcome input from industry stakeholders.

The SEP Working Group is tasked with ensuring consistent and proper application of patent laws and enforcement mechanisms specific in areas where patented technologies are embedded in technical standards. Voluntary technical standards underpin many modern technologies. From telecommunications and automotive systems to artificial intelligence, standards enable interoperability, open markets, and accelerate innovation. Many of these standards incorporate patented technologies—representing significant investment, creativity, and risk-taking by inventors.

In view of these significant investments, in its recent announcement about the SEP Working Group, the USPTO stated, “Patent holders who contribute their technologies to standards face widespread efforts to devalue their contributions, unclear rules about their rights, and systematic suppression of licensing rates.”

The SEP Working Group aims to advance policy approaches that promote consistent and correct application and enforcement of intellectual property laws by focusing on these three core objectives, as outlined in the published statement:

  1. Restoring Robust Remedies for Patent Holders–Clarifying that valid patent rights, including SEPs, deserve strong and predictable enforcement;
  2. Facilitating Meaningful Participation in Standards Development–Exploring mechanisms to incentivize and enable broader participation in standard developing organizations (SDOs), particularly by small and medium-sized U.S. enterprises; and
  3. Engaging Stakeholders and Promoting Transparency Across the Innovation Ecosystem–Creating channels for dialogue with patent holders, implementers, SDOs, and other stakeholders to: (a) understand the challenges these groups face and identify solutions, and (b) support these groups by developing resources to increase predictability in SEP licensing negotiations and standards development.

Notably, the USPTO also recently has provided two positional briefs in court cases related to these objectives.  Director Squires continues to have an interest in pushing for increased patent value by this action, in addition to his previous directives such as more Director oversight of the Patent Trial and Appeals Board (PTAB) decisions, initiatives to enhance patent eligibility guidelines, initiatives on artificial intelligence patentability guidelines, and internal USPTO usage of artificial intelligence tools to enhance examination of patent applications, among others.  

The SEP Working Group initiative has particular interest internationally as well.  Many countries struggle with SEP issues and related licensing and litigation.  By indicating the USPTO believes injunctive relief, which is rarely granted by courts, for example, should be granted more often in certain situations, under Director Squires leadership, the USPTO is signaling future and systematic pro-patent initiatives likely will be forthcoming from the USPTO.  Stay tuned.

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