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Marks & Clerk is one of the UK’s foremost firms of Patent and Trade Mark Attorneys. Our attorneys and solicitors are wired directly into the UK’s leading business and innovation economies. Alongside this we have offices in 9 international locations covering the EU, Canada and Asia, meaning we offer clients the best possible service locally, nationally and internationally.
When drafting a patent application that the applicant hopes will become a standard essential patent (SEP) once granted, there are a number of considerations that need to be kept in mind.
United Kingdom
Intellectual Property
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When drafting a patent application that the applicant hopes will
become a standard essential patent (SEP) once granted, there are a
number of considerations that need to be kept in mind.
The claims form a critically important part of any patent
application, as it is the claims which define the protection which
is sought. It is the features recited in the claims of a granted
patent which will need to “map” to a standard in order
for it to be deemed a SEP.
A standards invention may involve novel aspects at multiple
entities that are in communication with each other. In a
telecommunications context this may involve a user equipment (e.g.
a mobile phone) in communication with a network entity (e.g. a base
station). When drafting claims for such a standards invention it is
important that the patent application includes claims directed to
most, if not all, of the entities that are performing novel steps.
Having claims specifically targeted at different entities can
simplify licensing negotiations and make enforcement actions more
straightforward.
Keep in mind that, at the time of drafting the patent
application, it may be envisaged that a particular function or
module will perform the invention, but after standardization
discussions it may in fact be an alternative function or module
that performs the invention in the standard. As an example, in a
telecommunications context it may be envisaged that a session
management function (SMF) in the core network will perform the
invention, but when the standard is adopted it is an alternative
function in the core network that performs the claimed steps. As a
result, it is important to use broad terminology in the claims to
recite the component performing the invention to ensure that the
claims remain mapped to the standard.
As technologies advance, the standards develop over time. For
example, according to 3rd Generation Partnership Project (3GPP)
standards a base station in 3G is called a “NodeB”, in 4G
it is referred to as an “eNodeB”, and in 5G it is called
a “gNB”. When drafting a patent application for a
standards invention, it is important to use terminology consistent
with standardization documents, whilst at the same time ensuring
broad terminology is used so that if a SEP is obtained, the claims
are not interpreted as being limited to a particular technology. It
is also critical to regularly review the claims of pending
applications in light of evolving standards, in case this
identifies a need to adjust the claim wording or avoid a specific
limitation.
Marks & Clerk patent attorneys have vast experience in
drafting SEP patent applications according to many different
standardised technologies, and use these techniques and many more,
to prepare robust patent applications suitable for alignment with
standards.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.