A Standard Essential Patent or SEP is a patent right that encompasses one or more features defined within a standard. In other words, anyone implementing the standard in a way that uses the protected feature or features in a product or service will necessarily fall within the scope of the monopoly afforded by the patent.
In some cases the patented feature or features may be themselves essential when implementing the standard. In other cases the patented feature or features may be defined as optional within the standard, i.e. an implementer may or may not decide to deploy them.
SEPs are no different from other patent rights in that they are territorial rights, providing protection only in those countries or regions where patents have been granted (or where patents are being sought). Typically a SEP holder will obtain patents only in a limited number or countries or regions. However, SEPs differ from most other patent rights in that an implementer may have little or no choice when deciding whether to implement a protected feature or features, assuming that it wants to enter the relevant market. Detecting infringement may also be relatively straightforward: if you implement the standard you infringe the SEP.
Of course, many patents are asserted as SEPs, but not all such asserted patents will satisfy the criteria. A careful analysis is required to determine whether or not a patent is truly a SEP.
SEPs are widely encountered in the field of telecommunications, where many thousands of SEPs exist covering 3GPP standards such as 4G, 5G etc. In the case of 3GPP standards, the organising body European Telecommunications Standards Institute (ETSI) maintains a register a patents that have been submitted to it by members and which are alleged to be SEPs. However, many other national and international standards exist and to which SEPs apply, and for many such standards there are no SEP registers.
The UKIPO offers a SEPs Resource Hub which provides further useful information on the subject of SEPs.
The European Union is currently considering implementing a SEP Register for multiple standards. If implemented this will be a significant development, possibly adding a significant administrative burden for SEP holders. One of the stated objectives of the proposed Register is to increase transparency for SMEs to allow them to more efficiently navigate the SEP landscape. This will also of course increase the visibility of SEPs, potentially causing more SMEs to be brought within the licensing regimes. Marks & Clerk is closely watching this development in order to be able to properly advise and assist our clients should the Register be implemented.
Marks & Clerk patent attorneys and lawyers have huge experience in the area of SEPs, having been responsible for filing and prosecuting patent applications covering many different standardised technologies. They routinely perform claim-mapping to determine the relevance of patents to standards, provide support for SEP litigation, and are able to assist with aspects of SEP licensing.
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.
