Mistakes That May Cost You Your Standard-Essential Patents

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Standard-essential Patents: the patents which are the million-worth revenue-generating source for any organization once it is identified as a SEP; the patents which are necessary to make a product compliant with certain industry standards, wherein the manufacturer needs to use patented technology and it is impossible to manufacture that without infringing the said patented technology.  

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Simply put, SEP is a patented technology that is essential to the use of industry standards. SSOs like IEEE, ETSI, 3GPP, ITU, and others may demand standard participants to: 

  • Disclose any SEPs during the standard’s development. 
  • License any SEPs on fair, reasonable, and non-discriminatory (FRAND) or reasonable and non-discriminatory (RAND) terms, also known as a F/RAND licensing obligation. 

However, what if somehow the standard-setting organizations miss your patent, or something goes wrong?  

Looking at the scenario, a lot can go downhill in the search for standard essential patents. Overlooking the details, ignoring certain factors, or not properly understanding patents can result in these gem patents being overlooked from a large patent portfolio, leading to a direct impact on capital gains and consequent financial losses for the organization.   

What are the failure points of missing a SEP; once we know this, we’ll know where to put our efforts and hard work into and what to do to get the maximum benefits of our patents as SEPs. 

  1. Selling our patents to some other assignee.  
    Let’s say there is a company X. It has a patent related to Wi-Fi standards but due to some reasons one of which could be to get a quick payoff Company X sold all the rights of the patents to another Company Y. Now when company Y tallied the newly acquired patent with the industry standards, it realized the actual worth of the patent. This could be a big loss for Company X as it failed to recognize the true value of the patent. 
  2. Not regularly tallying our patents with those of the newly added or updated Industry standards.  
    Whenever a new update of a standard is released, some optimized features are added to the technology standard.  
    Also, companies often check their own patents and compare them with different standard versions. The problem, however, is that companies do not conduct such analysis and research regularly, or with each standard release. Because after all, it’s a tedious process. 
    By not regularly tallying our patents with the updated releases, we can lose the opportunity to get one of our patents registered as a SEP.  
    For example, company X has a patent with claims stressing features 1,2,3,4,5. When the company’s professionals checked the industry standards, they couldn’t find anything relevant. Now after a year, the SSO released an optimized industry standard with specifications 1,2,3,4,5. Now if company P’s professionals do not keep a tab on new releases and updates, they can miss a huge chance of declaring their patent as a SEP.  
  3. Mapping the claim’s key features on a word-to-word basis and not giving attention to the actual technicality of the claim’s key features.  
    Take the term “Qi charging,” a type of inductive wireless charging standard, for example. Now, Company X’s claims also refer to wireless charging based on capacitive wireless charging, which is completely different from the industry standard Qi charging. 
    Here, we can see that we cannot just go by the word “wireless charging”. We have to see and understand the technicality behind the industry’s wireless charging method and then our own claim’s methodology of wireless charging.  
  4. By not comprehending the actual standard requirements of the components with that of the claim’s key features.  
    Let’s take “10 Gigabit Ethernet- a standard by IEEE” for example. 10 Gigabit Ethernet incorporates an SFP interface which is a modular slot for a media-specific transceiver, such as for a fiber-optic cable or a copper cable. . The form factor and electrical interface of this device are specified in a multi-source agreement (MSA) from the Small Form Factor Committee. 
    Now there is another company A, whose one of the patent’s claims discloses a pluggable optical transmitter module and wants to declare itself as a SEP standard.  
    However, the question arises as to whether the patent’s claims correspond to industry standard claims. This patent includes a pluggable optical transmitter module and does not include an entire pluggable optical transceiver module. The difference between this standard specification and the claimed features should be diligently understood to avoid confusion. 

Our Services 

  • Check the necessity of a pool of SEP candidates 
  • Uncover undeclared SEPs hidden in your IP portfolio. 
  • Determine the most recent version of standard mapping on your SEP in your IP portfolio. 
  • Knockout predatory SEP(s) & save licensing cost 

Our Methodology (SEP Essentiality Check)   

  • Comparing issued patent claims to stated standard requirements. (There may be several proclaimed standards.) 
  • Claim charts are used to map the independent claims of a patent with the standard specifications. 
  • Before mapping, review all versions of the standard or drafts for the relevant subject matter, keeping in mind any time constraints. 
  • Check to see if the claimed subject matter is an optional or required component of the standard. 

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