Identify potential SEPs in your patent portfolio, determine evidence of use of your SEPs, or assess essentiality to the standard before entering licensing negotiations.
Standard essential patents (SEP) are those required in order to comply with a technical standard. According to ETSI definitions, a patent is considered essential “if it is not possible on technical (but not commercial) grounds, to make, sell, lease, otherwise dispose of, repair, use or operate equipment or methods which comply with a standard without infringing that IPR”.
As successful standards are adopted across entire industries, intellectual property holders vie for their technologies to be incorporated into standards to generate valuable revenues through royalties or licensing.
During the standard-setting process, IPR holders agree to license their patents on FRAND terms (fair, reasonable, and non-discriminatory). However, not all holders of patents essential to a standard participate in the standard-setting process or in some cases, were not aware of those patents. Therefore, they are not obligated to declare their patents as essential and in effect, they are not subject to license on FRAND terms.
Over-declaration by IPRs have also become an issue in SEPs. Patent owners may make “blanket” disclosures without identifying the specific patents. Assessing essentiality before entering any licensing negotiations therefore becomes important as not all SEPs are valid or may be infringed by a product that uses the standard.
Identifying SEPs, checking for essentiality and validity, among others should take part of a firm’s risk management strategies and must be performed in order to make better licensing decisions.
Parola Analytics provides various services that can be tailored to your specific needs and requirements with regards to SEPs. For more information on how to get started with your search, contact us.
Our client, one of the world’s largest telecommunications companies with thousands of patents for license or sale, needed a partner with deep technical understanding of their patent portfolio and technical Standards (IEEE and 3GPP).
Parola Analytics successfully identified which of the client’s patents are most valuable for licensing or sale based on essentiality to specific standards or evidence-of-use from other companies.
The inclusion of a patent to a standard creates valuable opportunities to maximize the value of one’s patent portfolio through licensing. Identifying potential SEPs in your portfolio is the first step.
The Patent-to-Standard search and claims mapping we performed for a US-based telecommunications company that provides advanced communication solutions allowed them to identify potential SEPs in their patent portfolio and determine essentiality to the standard.
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