Despite lack of SEP policy, US government knows standards matter
Recent announcements by the Commerce Department and White House recognise standards’ impact on national security and competitiveness
By Jacob Schindler
This is the Policy Agenda, a regular Sisvel Insights feature that will analyse global legislative and regulatory developments and unpack their potential impacts on the world of IP and innovation. This edition is focused on the United States, which has seen several developments from both the executive and legislative branches in recent weeks.
An event on SEPs held by a leading Washington D.C. think tank last week began with a striking observation from former USPTO chief Andrei Iancu. “It may surprise people to know that the United States has no policy on standard-essential patents,” Iancu told listeners to a Center for Strategic and International Studies webinar.
As the Sullivan & Cromwell LLP partner went on to explain, the US has adopted various SEP policies going back to 2013, but each has subsequently been suspended, and the current administration has chosen to forgo a formal government stance. At the same time, the European Union and China are each striving to carve out a more prominent role in global SEP governance.
Despite the lack of a unified strategy for SEPs, the executive branch has taken actions which signal US input into global standards-setting is considered a national security issue. And on Capitol Hill too, the geopolitical implications of SEPs and patents in general continue to be discussed. Here are a few of the most notable recent developments.
Commerce Department narrows export controls to protect standards-setters
In what it called a “major update to US leadership in global standards development”, the US Commerce Department issued new rules on 18th July making it easier for US companies to navigate export controls while participating in standards-setting.
Since 2019, the US government’s liberal use of the BIS Entity List to restrict the transfer of US technology to a growing number of foreign entities has created significant questions about what activities are permissible in the context of standards-setting in 3GPP and other global organisations.
Over the past five years, Commerce has issued and repeatedly tweaked language providing 5G and other standards contributors with exemptions to certain controls. The publication of this latest amendment suggests that industry continued to harbour concerns about the rules having a chilling effect on US standards participation. Indeed, the Department now acknowledges that the most recent revisions, rolled out in 2022, were “not broad enough to allow US companies to participate freely in standards development”.
Commerce summed up this latest update’s key changes in its press release:
Revising the definition of standards-related activities to accurately reflect the U.S. model of public-private cooperation in standards to further global innovation and trade.
Clarifying the applicability of export controls to specific “software” and “technology” for “standards-related activity” to promote transparency and effectiveness in U.S. contributions to global standards.
Perhaps more significant than the text itself is the way standards-setting is described by top officials. “U.S. participation in international standards development is vital to our national security,” Under Secretary for Industry and Security Alan Estevez said.
Even stronger language can be found in the background information published in the Federal Register alongside the new rule:
[A]ny impediment to U.S. participation in standards development forums is a national security threat to the United States because it not only limits U.S. leadership in standards development, but other countries are already racing to replace U.S. participation with their own leadership and standards. In many cases, a decrease in U.S. participation not only undermines U.S. national security and foreign policy interests but also contributes to a potential future global standards environment that works to oppose U.S. interests.
The US government plainly recognises the importance of standards to national competitiveness. Another policy published in July offers further support for this view.
White House releases roadmap for whole-of-government standards strategy
In late July, the Biden administration unveiled its plan for implementing the National Standards Strategy for Critical and Emerging Technologies (NSSCET), an initiative it launched in May 2023. The policy calls on various government agencies to support the private sector-led standards development process in ways that promote national and economic security.
Among other things, the strategy calls for continued US government engagement with foreign governments “to provide balance and efficiency around FRAND licensing”. The USPTO, in particular, is called on to “forge alliances and collaborate toward enhanced efficiencies in standards essential patent licensing markets”. The recent MoU in which the US and UK IP offices agreed to collaborate on SEP policy for the next five years is mentioned; that alliance could be the first step in a broader push.
That’s the extent of the patent-related material in the 26-page document. SEPs are seen mainly as a topic for global engagement – not an area in which domestic capacity needs to be built. The USPTO looks set to take the lead on this, and it will be interesting to see how it builds on its partnership with the UKIPO as Europe and Asia continue to produce most of the market-moving FRAND developments. Beyond calls for balance and efficiency, the US government has not taken a strong public stance on many of the global SEP policy controversies of the day. With a new US president taking office in 2025, a wait-and-see approach seems likely to continue – at least until then.
Congress puts injunctions on the agenda
The lack of an executive branch SEP policy has been noticed on Capitol Hill, including by the powerful US House Appropriations Committee, which flagged it in a report on the 2025 budget for the Commerce and Justice departments. Tucked away in the 200+ page document was this paragraph:
The Committee recognizes the importance of balanced standard essential patent policies to American industry and jobs. There is currently a lack of clarity on the administration’s standard essential patent strategy. The Committee encourages the [Commerce] Department to examine how foreign standard essential patent injunctions are negatively impacting American interests.
The framing of the question implies strong scepticism of SEP enforcement. Fair or not, it could indicate that proponents of weaker patent rights see opportunity in the current absence of a joined-up US government SEP policy.
At the same time, a number of bills that would strengthen patent rights have been put before the 118th Congress. Most recently, Senator Chris Coons re-filed the RESTORE Patent Rights Act, which would reintroduce a rebuttable presumption that an injunction is warranted after a court makes a final ruling of patent infringement, effectively overriding the Supreme Court’s 2006 eBay decision.
Like the Patent Eligibility Restoration Act (PERA) and the PREVAIL Act, which address subject-matter eligibility and PTAB reforms, respectively, the RESTORE Act is not expected to advance in this session of Congress. But all three bills, together with the proposal for a study of foreign injunctions, indicate that both sides are prepared to act if the political winds shift on SEPs when the next presidential administration begins.
Jacob Schindler is Sisvel's senior content & communications manager
