Designing a Standard Essential Patent (SEP) Program

Abstract

Standard Essential Patents (SEPs) are a unique form of intellectual property rights (IPR), due to various considerations that can notably impact their value and usage options. Some of these considerations include:

1. Potentially simplified infringement case, when litigated;

2. Easily-detectable potential infringement, to facilitate drafting claim charts prior to litigation discovery;

3. Readily-identifiable potential infringers, to facilitate identifying targets for an enforcement program;

4. Possibly global licensee pool, to financially incentivize multi-national prosecution;

5. Potentially limited enforcement options, such as a potential unavailability of an injunction;

6. Potentially limited royalty rates, due to (fair) reasonable and non-discriminatory ((F)RAND) limitations; and

7. Affirmative commitments to license SEPs on FRAND terms in some standards setting organizations (SSOs).

8. Disclosure obligations of related patents and applications in some SSOs.

Some helpful, excellent articles explain advantages for organizations in certain industries pursuing SEPs as part of a patent portfolio. Described herein are some issues to consider when designing a SEP program for patent portfolio growth.

Keywords: Standard Essential Patents, SEPs, Litigated, Infringement, Injunction, SSOs, FRAND