Standard Essential Patents (SEPs)

Sterne Kessler takes an integrated approach to addressing SEP issues, guiding clients in patenting, ensuring freedom to operate, and resolving disputes.

Standard essential patents (SEPs)—patents that cover industry-adopted standards, such as WiFi and 4G/5G technology—were once thought to be a niche area of intellectual property law, confined to just the wireless communications industry. Not anymore. Connectivity is now ubiquitous in our daily lives, and permeates through almost every industry. Connectivity, and the related concept of interoperability, are made possible by industry-adopted standards. And with standardized technology comes SEPs.

With our increasingly connected world, it is no surprise then that the number of issued SEPs has almost tripled since 2015. In addition to a surge in quantity, the relevance of SEPs has broadened—wireless and telecom standardized technologies have become prevalent in everything from biotech and automotive products to home appliances and energy production. Consequently, the impact of SEPs is being felt across all major industries.

Our Team

Sterne Kessler’s SEP team has been at the forefront of this SEP movement. Our team brings together industry experience, advanced technical degrees, and years of experience handling complex IP matters across multiple venues to provide our clients with well-thought-out strategies for both taking advantage of SEP opportunities and defending their interests when faced with SEP disputes. Sterne Kessler’s SEP team also continuously monitors developments in technology and SEPs across all industries to identify patterns and trends so that we can provide our clients with SEP advice to keep them ahead of the competition. Lastly, while members of industry, Sterne Kessler’s SEP team members also participated in standards setting organizations—as engineers and technologists—and utilize this firsthand experience to provide unique perspectives and strategies for our clients.

SEP Management Plan

Our team works with clients to develop SEP management plans. This includes determining realistic actions and tasks that align with our clients’ goals and budgets. Our comprehensive SEP management plans are specifically tailored to each individual client, and are developed based on an assessment of the client’s current portfolio and R&D efforts. These plans also involve SEP and non-SEP audits to ensure that all of our client’s interests are adequately protected. Further, we assess the client’s current standard setting organization (SSO) activities, if any, to ensure compliance with their policies. Ultimately, the team makes recommendations and builds a plan for how best to develop and grow a company’s overall SEP portfolio.

SEP Preparation & Prosecution

With a technically diverse bench of patent prosecutors and leading IP strategists, we assemble patent prosecution teams that can address the technical challenges and strategic issues that arise when drafting and prosecuting standard essential patents. Our strategies help our clients ensure that their pending applications and issued patents follow the standardization activities of the corresponding SSO, while also helping develop post grant challenge-resilient portfolios.

SEP Freedom to Operate Opinions

SEP issues can arise in both predictable and unanticipated areas. Our teams promote certainty and freedom to operate for our clients by assessing declared patents and applications, evaluating proposed products and activities, and assessing competitors’ compliance with SSO IPR policies. We also assist clients in strategizing ways to influence the development of standards in favorable directions from an IP perspective.

SEP Defense and Licensing

We are experienced in standard essential patent litigation defense, and we tailor strategies for clients to respond to demand letters and litigate when appropriate. We leverage our strategic and technical experience to stay one step ahead through assessments of essentiality and opinions on invalidity, unenforceability, and non-infringement. We take a balanced approach by holding adversaries to their FRAND obligations while ensuring that our clients are in compliance to minimize risk. Finally, we are experienced in navigating the complex issues presented by patent pools and their aggregation of standard essential patents in both licensing and litigation contexts.

SEP Enforcement and Licensing

Our SEP enforcement and licensing experience starts with our strategic portfolio building: identifying key patents and applications, using continuation practice to ensure the proper coverage scope, and prosecuting to develop post grant challenge-resilient portfolios. We are experienced in identifying targets for licensing and enforcement and mapping patent assets to competitors. We advise clients on the merits and drawbacks of patent pool formation and participation, and ensure that royalty rates are properly and favorably calculated.

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