What’s the Standard? Strategies for Protecting Standard Essential Patents

There has been much discussion as of late on “essential patents” or “standard-essential patents” (SEPs). Broadly speaking, SEPs are a particular type of patent having claims which cover an aspect or feature adopted by a Standard-Setting Body (SSB). For example, a company developing wireless technology may submit some improvement or technical feature to the Institute of Electrical and Electronics Engineers (IEEE) Standards Body for consideration. Should that improvement or technical feature be adopted by IEEE, any patent filed by the company having claims which cover those improvements or technical features would be considered an SEP.

SEPs have a significant value proposition in that any technology which operates within that standard would need to implement the corresponding improvements or technical features covered by the claims of the SEP. Typically, to ensure there is not a monopoly by a company holding the SEP, there are default licensing and royalties paid to the company by others adopting the standards. As such, pursuing SEPs can often result in significant income through such licensing and royalty payments – without much added cost to the company besides pursuing patent protection.

Given the value that SEPs can provide, companies should implement various strategies for protecting these highly valuable types of intellectual property (IP). Strategies should include being aware of any submission or presentation deadlines by the Standards Body, leveraging provisional applications to secure the company’s stake in the ground, and optimizing their timeline for filing related non-provisional patent applications.

Beware of Submission Deadlines

Understanding how to use patents to protect IP requires recognizing when certain activities can prevent patents from being successfully pursued. While companies may be aware of the one-year grace period for pursuing patent protection in the U.S., being reactive and relying on the entirety of the one-year grace period for pursuing protection may be to the company’s detriment. For instance, a submission that is up for debate would be presented to a wide audience – likely including competitors. This gives competitors time to innovate on top of those submissions, file potentially blocking patent applications, and so forth.

If a company is at all involved in developing technology that could be submitted to an SSB, the company should immediately and proactively calendar any submission deadlines for the SSB when those dates are released. Even if the company is unaware of the exact deadline or the deadlines are difficult to track for different bodies, the company can make conservative estimates. For example, IEEE typically has quarterly Standards Board meetings, with a submission deadline ahead of those meetings. The company can thus conservatively calendar a week or two prior to the start of Q1-Q4 as potential submission deadlines. Ahead of those submission deadlines, the company should reach out to their R&D teams to determine whether any technology is under consideration for submission. This ensures that the company can be proactive and deliberate ahead of these submissions, rather than reactive.

Leverage Provisional Applications

Once a company is aware of any submissions, it should file provisional applications which cover those ahead of the deadline. Given their informal nature, provisional applications can offer a low cost solution to quickly protect any core concepts which are being submitted while providing added flexibility by being able to further build out those core concepts at the non-provisional stage.

For instance, the provisional application could simply include the text or slides which are being submitted for consideration to the Standards body, along with any additional context or alternatives that could potentially be considered as appropriate. The company should file the provisional applications as close to the submission deadline as possible to delay the deadline for filing the corresponding non-provisional application. This ensures ample time for deliberations at the Standards Body to take place before the company needs to devote resources to more robust, non-provisional applications for their innovations that are implemented in the new standards.

Strategically File Non-Provisional Applications Near Conversion Deadline

Applicants have one year from the filing date of a provisional application to file any non-provisional applications which claim the benefit of the provisional application. After expiration of the one year period, any benefit of the provisional application is lost. Of course, a non-provisional application can be filed anytime within that one year period. However, and especially for Standards-related provisional applications, the more time that the company has to determine potential adoption by the Standards Body, the better.

Like any large company or entity, Standards Bodies can be slow moving. As such, delaying the ultimate deadline for claiming the benefit affords the company more time to see whether a submission is going to be adopted. As that deadline approaches, there should be on-going discussions between the R&D team and IP legal team on the outcome of discussions with the standards body, including any delta from what was originally contemplated by the R&D team and what may be adopted as a standard. While of course necessary in all cases, it is imperative for SEP cases in particular that the IP legal team fully understands both the technology and the procedural outcomes of the SEP discussions. This will better inform decisions relating to the pursuit and direction of any ultimate non-provisional application.

If, for example, a submission is likely not going to be adopted, the company can forego filing any non-provisional application, thus conserving legal spend. However, if a submission is likely going to be adopted (even with potentially some delta from what was submitted), the company can file a non-provisional application with claims covering the submitted improvements or technical features including the delta. Additionally, by delaying filing the non-provisional application, the company is also necessarily delaying prosecution – which further allows the company to pivot the claims to cover any delta that is described in the non-provisional application and ideally supported by the original provisional application.

Conclusion

Standard Essential Patents can be highly valuable IP assets in a company’s patent portfolio. By being purposeful in a patent filing strategy which leverages low-cost provisional applications and targeted non-provisional applications, the company can increase a likelihood of obtaining meaningful patent claims covering what is ultimately adopted.

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