Much of the focus on standard essential patents (SEPs) over the past decades has centered on the telecommunications industry. With technologies converging and industries overlapping, telecoms impact nearly every business today in some way. Furthermore, standards-centric industries are constantly expanding and as a result many companies’ IP and R&D departments are spending more and more time and money dealing with SEPs. Dinesh Narayanan Kutty, Senior Director, Product Management and Gaurav Sawant, Associate Director, Service Operations at Clarivate reveal what IP and R&D teams need to know about SEPs and what it means for their SEP and IP strategies.
In a new white paper from Clarivate™, Don’t let standards slip: How to prioritize your efforts when everything is essential, the European Telecommunications Standards Institute (ETSI) database showed that 36% of declared SEPs – 144,000 – were declared within the past two years. Increasingly, SEPs are spreading to industries including automotive, Internet of Things (IoT), healthcare and more.
Whether your company is a SEP owner or implements technologies using SEPs, you need to be aware of the current technological and legal landscape around SEPs.
What implementers need to know
If you are an in-house IP practitioner or in research and development (R&D) at one of the many companies now affected by SEPs, you likely know that ’essential’ patents designated by their owners may, in fact, not be essential to the implicated technology. As we note in our white paper, a 2016 European Commission report suggested that only between 10 to 50% of patents declared to be essential in the ETSI actually are.
In addition, for companies doing business across borders, the legal landscape differs among major markets. For example, in June 2022, the United States Department of Justice and U.S. Patent and Trademark Office, along with the National Institute of Standards and Technology (NIST) announced a new case-by-case approach to SEP enforcement. Although the change in policy was presented by the agencies as promoting innovation and competition, it may lead to increased uncertainty and litigation around SEPs.
The ambiguities around designation of SEPs and a patchwork of national laws and policies regarding enforcement and the meaning of fair, reasonable and non-discriminatory (FRAND) licensing terms have complicated the process of compliance for a variety of companies. For SEP implementers – particularly those in industries that are only beginning to develop standards – this uncertainty draws attention and resources away from higher volume and more straightforward development and patent work.
What SEP owners need to know
As with implementers of SEP-based technologies, SEP owners are dealing with emerging technologies and industries. As opportunities for FRAND licensing expand, current and potential SEP owners also face growing complexities in declaring SEPs and evaluating portfolios of non-declared patents for applicability to developing standards.
For R&D and IP teams, investment throughout the pipeline often requires specific and comprehensive market intelligence that might not seem like a priority for your team right now.
Evaluating the SEP landscape, re-evaluating your SEP strategy
It is key for both owners and implementers to position themselves to take advantage of new standards, prepare for FRAND licensing requests and mitigate risks from competitors. This might involve re-evaluating your SEP strategy – and perhaps even your entire IP strategy which can include everything from educating company stakeholders to evaluating competitors and potential collaborators.
Understanding the SEP environment, by partnering with experts with deep knowledge and experience in SEP projects for essentiality analysis, market intelligence or litigation intelligence, can help organizations gain clarity from the complex and better understand SEP opportunities and challenges.
Connect with Clarivate
To learn more about the current SEP landscape and how to prepare your business for the future, download our new white paper, Don’t let standards slip: How to prioritize your efforts when everything is essential.
Connect with one of our SEP experts to discuss how we can help your team navigate SEP challenges thoroughly and efficiently.
Dinesh Narayanan Kutty
Senior Director, Product Management
Associate Director, Service Operations