On November 6, 2023 I submitted a response to the public comments which can be found here. I have also included my comments in full on this blog in a series of posts including the below. The only change in my submission is that for each posts the footnoting was renumbered for just the individual post.
- If responding affirmatively to question 1, what can the Department of Commerce do to mitigate the effects of any adverse foreign policies relating to intellectual property rights and standards? Please clearly identify any such adverse foreign policies with specificity.
The Department of Commerce can do a number of things to mitigate the adverse effects of foreign policies.
First and foremost, be very, very careful when considering whether to honor any extradition or other Interpol requests from countries that generate these adverse effects. For example, it is well-documented that China has been very active in pushing the extra-territorial reach of its regime.[1] This is not an idle threat. This threat is real. I personally was implicitly threatened with bodily harm and explicitly threatened with a global extradition request for alleged criminal antitrust violations in my roles as Chief Legal and IP Officer of Vringo. The threat arose because Vringo had successfully enjoined a Chinese company that was infringing its SEPs.[2] Licensing SEPs should not be a life-threatening exercise.[3]
Second, beyond taking legal threats by foreign governments to US citizens and companies seriously, the Commerce Department should affirmatively coordinate with their counterparts in other jurisdictions to ensure that the commercial interest of the US in a well-functioning system of technical standardization and patents licensing – including standards essential patent licensing, remain protected. Far too much SEP and standardization policy is being run by lawyers and economists who have little if no practical, industry experience in what is involved at the ground level in creating and developing a technical standard and/or licensing SEPs, let alone negotiating complex commercial transactions between unwilling counterparties. Involving the Commerce department more actively in regulating these areas would hopefully provide a voice to people and companies whose lives will be directly impacted by the diktats imposed by those currently only focused on case law and simple economic models.
Third, as one of the chief promoters of the World Trade Organization (WTO) Trade Relates aspects of Intellectual Property (TRIPs) agreement,[4] the U.S. should reiterate its continued commitment to and support of that agreement. The WTO TRIPS secures a uniform patent protection system,[5] under which signatories must ensure that the enforcement procedures under their law permit effective action against any act of infringement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements.[6]
The WTO TRIPs agreement sets down a unitary patent system, under which all patents – regardless of their industry or other characteristics – receive the same protections. It is in the interest of some jurisdictions, and to the detriment of technology-leading jurisdictions such as the U.S., to try and break the unitarity of the patent system by weakening remedies against the infringement of standards essential patents or patents in specific areas another country’s national champions are interested in. However, a legal system that would apply a different standard to standard essential patents versus other patents (or to patents in a specific sector) would violate trade obligations under the WTO TRIPs.[7] It would also undermine U.S. trade interests in general, because it would allow other jurisdictions to lower their patent protection for any U.S. technologies they wish to copy or devalue.
In about a year, on January 1, 2025, the WTO TRIPs agreement will mark 30 years since it took effect on January 1, 1995. The U.S. should work with the WTO and other ally jurisdictions to mark that anniversary and to reiterate and signal its support of this agreement, along with other U.S. allies such as Europe, Japan and others. A global perception that the WTO TRIPS has been weakened would make it more difficult to enforce patents, including standards essential patents, and generally compromise the interests of US companies who invest in critical and emerging technologies. In turn, such perception would reduce U.S. investment and leadership in critical and emerging technologies.
As part of reiterating its commitment to the WTO TRIPs, I believe it would be crucial for the U.S. to reiterate the unitarity of patent protection – the same protections should apply to all patents, regardless of their industry and regardless whether or not they are standards essential.
Fourth, as in the past, the USPTO should continue to issue litigation statements of interest in support of U.S. leaders in development of critical and emerging standardized technologies where their proprietary technology is adversely and unfairly impacted by foreign policies.
Fifth, the Department of Commerce should proactively support procedural fairness principles in standards development, and hold both US and non-US SDOs accountable to procedural fairness principles of openness, balance, transparency etc. Procedural deficiencies such as closed-door policy changes at SDOs typically undermine the interests of U.S. leaders in critical and emerging technologies. Other US agencies such as the Department of Justice and Federal Trade Commission should support this effort by prioritizing antitrust investigations where the violating conduct involves infringement of processes in standards development organizations.
Sixth, the Department of Commerce should lift the veil off of astroturfing organizations that pretend to represent small and medium sized enterprises (SMEs) while in fact being funded and organized by tech giants such as Google, Apple, Amazon, Microsoft etc. One example of such organization is the ACT App Association, known as the ACT App(le) association. I have written at length about how The ACT App Association should really be called the ACT Apple Association.[8] It was founded in 1998 by Microsoft as a lobbying arm utilizing smaller player’ as a front to support its defense against antitrust charges on both sides of the Atlantic. Over the years, it remained a vehicle for Big Tech interests. Although hard to find (and strategically placed off the members’ page), if you scroll all the way down this the about on their website you see the ACT App(le) association’s main sponsors are Apple, Microsoft, Intel, Verizon, and AT&T (other recent sponsors have included Facebook, Oracle, and eBay)[9]. Big Tech has been especially proficient in using Astroturfing, universities, and law firms to mask their agenda by claiming to speak on behalf of SMEs.[10] Yet, they do not speak on behalf of SMEs – but in fact represent interests often opposed to those of SMEs.[11] In developing policy in general, and considering the interests of SMEs in particular, US policy makers should recognize the true identity of the numerous organizations that pretend to represent SMEs but in fact are funded by big tech giants. Data sources such as the Tech Transparency project can be helpful in this regard.[12]
[1] See, e.g., Chien-Huei Wu, Howard Jyun-Syun Li, Mao-Wei Lo, Wen-Chin Wu, Long arm of the regime: who signs extradition agreements with China?, International Relations of the Asia-Pacific, 2023;, lcad004, https://doi.org/10.1093/irap/lcad004; https://www.jtl.columbia.edu/bulletin-blog/chinas-ambition-of-extraterritorial-jurisdiction-and-the-american-response
[2] See, e.g., A Short History of Vringo’s Battle With ZTE, especially the sources in FN81 available at https://kidonip.com/news/a-short-history-of-vringos-battle-with-zte/ and the transcript of the NDRC Meeting dated June 3 2015 created by David L Cohen, available at https://www.scribd.com/document/383751555/NDRC-Meeting-June-3-2015 page18.
[3] I also learned, to my chagrin, but not unexpectedly, through a confidential source, when the same foreign agents that threatened my life mentioned me and my sins (legally enforcing SEPs against a Chinese infringer, and winning) to a senior US government official, that official laughed it off and responded that “he is just a patent troll. Don’t worry, we have him taken care of.” Perhaps this is what she was referencing: Joff Wild, IP/Engine v Google, AOL et al – the most troubling patent case of 2014 (22 Dec 2014) available at https://www.scribd.com/document/478990962/Most-Troubling-Patent-Case-of-2014
[4] World Trade Organization, Annex 1C: Trade-Related Aspects of Intellectual Property Rights https://www.wto.org/english/docs_e/legal_e/31bis_trips_01_e.htm.
[5] WTO TRIPS, Section 5 https://www.wto.org/english/docs_e/legal_e/31bis_trips_04c_e.htm#5.
[6] WTO TRIPS, Section 41 https://www.wto.org/english/docs_e/legal_e/31bis_trips_05_e.htm.
[7] See Hearing Before the Subcommittee on Intellectual Property, Competition, and The Internet, or The Committee On The Judiciary House Of Representatives (112th congress, March 10, 2011) (“Finally, it is possible that such Balkanization of the Patent Act violates our international obligations under various treaties or protocols such as TRIPS, the intellectual property component of the General Agreement on Tariffs and Trade”) https://www.uspto.gov/sites/default/files/aia_implementation/hearing-mar10.pdf.
[8] On Deceptive Apps and Practices: Unmasking the ACT App(le) Association (Kidon IP Blog July 7, 2021) available at https://kidonip.com/frightful-five/on-deceptive-apps-and-practices-unmasking-the-act-apple-association/
[9] Id. See also Florian Mueller, Vast majority of ACT | The App Association’s funding comes from Apple, former employees tell Bloomberg: astroturfing against app developers’ interests (FOSS Patents Sept 19, 2022) available at http://www.fosspatents.com/2022/09/vast-majority-of-act-app-associations.html; Florian Mueller, Microsoft rightly withdrew support for ACT | The App(le) Association (which it once created) — why are Verizon, Intel, AT&T, Verisign still behind advocacy against 99.9% of app developers? (FOSS Patents April 2, 2022) available at http://www.fosspatents.com/2022/04/microsoft-rightly-withdrew-support-for.html
[10] See The ACT | APPLE Association Charade (Kidon IP Blog Aug 17, 2020) available at https://kidonip.com/frightful-five/the-act-apple-association-charade/; Tech’s Frightful Five and Their Allies Come to Brussels (Kidon IP Blog Feb 25, 2019) available at https://kidonip.com/frightful-five/techs-frightful-five-come-to-brussels/
[11] See, e.g., Florian Mueller, Not a class ACT: the so-called App Association is simply an Apple Association and does NOT represent app developers’ interests in fair distribution terms (FOSS Patents Oct 1, 2021) available at http://www.fosspatents.com/2021/10/not-class-act-so-called-app-association.html
[12] https://www.techtransparencyproject.org/
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