Designing a Standard Essential Patent (SEP) Program

les Nouvelles - Journal of the Licensing Executives Society, Volume LIII No. 3, September 2018

8 Pages Posted: 22 Sep 2018

Date Written: July 12, 2018

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

Suggested Citation

Wilson, Kelce, Designing a Standard Essential Patent (SEP) Program (July 12, 2018). les Nouvelles - Journal of the Licensing Executives Society, Volume LIII No. 3, September 2018. Available at SSRN: https://ssrn.com/abstract=3212735

Kelce Wilson (Contact Author)

Grable Martin Fulton, PLLC ( email )

Dallas, TX
United States

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