Charting Success in SEPs

📶Standard essential patents (SEPs) claim charting is fairly complex, primarily because of the inherent complex nature of standards. For example, standards 📄like the 3GPP ones, covering wide spectrum of technologies and concepts requires thorough understanding of the standards to prepare claim charts.
📶Key steps for SEP claim charting 📄 are:
1️⃣  Patent Understanding (and clarity on):
a. Novelty
b. File history comments (Prosecution history)
c. Right claims to pick (in case of varying scope in the claims)
d. In case there are multiple family members for a given patent it’s better to review all the family patents and choosing the member with broadest claim (as a starting point).
2️⃣ Broad picture of Standards 📄:
Having a bird’s eye view of the standard, key specifications, different modules, services etc. is important to save time when the actual analysis begins. For example, in case of 5G, broadly how the overall architecture looks like, key components like RAN, Core network, protocol stacks, 5G services etc. should be known.
3️⃣ Approach for Search and Analysis:
a. It’s better to have quick summary of the claims in your mind while analyzing standards. Many times while searching for mere a term or concept (and which is generic enough) hours are invested in reading unnecessary stuff which might not be essential to the patent claims. Because standards specifications are highly interdependent and interconnected docs, therefore it’s important to have high level picture first.
b. Further important to have understanding of critical and non -critical features of the claims so that focus is clear for the analysis. Selecting Right Features to start the Essentiality Search will save lot of time.
4️⃣  Art of stitching an infringement read📄:
Most of the time an independent claim would be mapping to multiple aspects of standard specifications and hence connecting these specifications to make a infringement read requires clear understanding of identified relevant features from the standard specifications. At times in order to establish connection between two sections one has to join a third specs from other standard document to ensure its not looking a discrete piece of dump.
5️⃣ Knowledge of Mandatory and optional features:
a.     The potential licensor will not pay a decent licensing fee if the mapped feature is not always going to be used in the product/service. Make sure you have knowledge of the same and to the extent possible find mandatory features and if couldn’t find then this patent is good to have but cannot be your star patent to fight with.
6️⃣  General Literature help
At times some known concepts might not be present in the standard specifications however claims might require them. So to prepare a complete claim chart and mapping every claim element, make sure to use some research publications/journals.

 

One thought on “Charting Success in SEPs”

  1. Nice Article

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