Standard Essential Patent Programme
A large telecoms client had very actively contributed to industry standards bodies like 3GPP. They had filed patents during this time but had not developed an internal process for declaring Standards Essential Patents and though they had no immediate plans to commercialise potential SEP assets, they wanted to ensure they met any declaratory obligations required by the standards bodies from a compliance perspective.
We worked with legal and R&D stakeholders to understand the declaration obligations and to define an internal policy for declarations of SEPs. This was reviewed in the context of HR patent reward programs and consideration of geographical nuances and then rolled out across the business to ensure all future patent filings that were standards relevant could be assessed and declared in line with the new policy.
In terms of the substantial existing portfolio, we carried out a mutli-stage process to identify potentially standards relevant patents, collate internal relevant information (from client employees) and then to provide a detailed essentiality assessment to identify the candidates that had to be declared.
The client had an efficient process that enabled them to meet their declaration obligations, a number of significant cases were declared to the standards bodies and in due course were able to be licensed through industry patent pools.