Opinions and Editorials

Jul. 22, 2022

Law360: ITC Standard-Essential Patent Remedies Shouldn’t Be Curbed by Deanna Tanner Okun

Intellectual property rights have been a foundational pillar of U.S. innovation originating from the U.S. Constitution, with enforcement at the border being of paramount importance.

Further, the commercial effect of international trade practices has been a significant congressional concern since the founding of our nation, tracing its origins to the Tariff Act of 1789 — the second act passed by the first U.S. Congress.

Some have argued, however, that enforcement of standard-essential patents at the U.S. International Trade Commission, where the remedy for a finding of infringement is a ban on importation of the offending articles, should be greatly restricted or even eliminated.

As a former commissioner and chair of the ITC, I disagree. The many technologies covered by SEPs are the product of billions of dollars in research and development investments over many years, and patenting the resulting breakthroughs is the only way invention companies and their backers can recoup that investment if the invention succeeds in the marketplace.

Without the ability to seek exclusion orders against products implementing the patented invention without paying for it, foreign technology developers would likely dominate the markets for standards like 5G.

Specifically, companies in China are the largest implementers of SEPs in products that they sell throughout the world, and, without the threat of an exclusion order, would be able to use American inventions without reaching an agreement to license them.

As someone who was at the table when the ITC made critical decisions regarding exclusionary relief, I know that ITC remedies provide a powerful tool to stop infringement.