Expert guidance on navigating SEP strategies licensing, and disputes to safeguard your competitive edge Marks & Clerk patent attorneys and lawyers have extensive experience in the area of SEPs, having been responsible for filing and prosecuting patent applications covering many different standardised technologies. We routinely perform claim mapping to determine the relevance of patents to standards, provide support for SEP litigation, and assist with aspects of SEP licensing. STAGE 1. Invention & Innovation – Pre-patent - IP strategy advice: Analysis of standards and standard development progress to help align innovation with Standard Setting Organisation (SSO) strategies. - Inventor training / awareness: Every time a submission is being prepared, inventors should consider if the submission addresses and solves a particular problem. If so, then a patent application may be desirable. - Assistance with participation in standard setting committees (ongoing beyond Stage 1. - Confidentiality agreements (NDAs) and collaboration agreements: For collaboration prior to filing. - Preliminary FTO analysis to avoid infringing existing patents may be useful in a wider commercial context. STAGE 2: Patent Filing & Prosecution - Patent drafting tailored for standard alignment - Jurisdictional and timing strategy: Coordinating global filings with standardisation timelines where applicable. - Claim scope management and monitoring during prosecution: maximise claim alignment to likely areas of standard adoption. STAGE 3: Essentiality Assessment, Declarations of Essentiality & FRAND Commitment - Essentiality review and assessment - Preparation of opinions for internal, declaration or licensing purposes. - Essentiality declaration support: prepare declarations with SSOs e.g. ETSI. - Evaluate whether a patent is truly essential to a standard -an analysis that underpins licensing strategy, portfolio valuation, and commercial negotiations. - FRAND commitment - advice on effects of FRAND declarations. - Portfolio tracking: Help monitor and manage SEP declarations across jurisdictions. - Support with SSO verification mechanisms (e.g. EU proposals if/when revived). STAGE 4: Licensing & Monetisation - FRAND licensing strategy: support bilateral or multilateral (e.g., patent pool) negotiations. - Link in with preferred specialist financial advisors for rate-setting guidance: based on comparable licenses, market practice, and recent litigation. - Drafting FRAND-compliant licences - Link in with preferred competition law specialists for advice on competition law compliance: Avoiding abuse of dominance or tying/bundling claims. STAGE 5: Dispute Avoidance & Pre-litigation Strategy - Negotiation Support: Positioning for commercial settlement. - ADR Advice: Options for arbitration/mediation STAGE 6: SEP Litigation - Overall litigation strategy advice - UK High Court & UPC SEP Actions: Enforcement, validity, and FRAND determinations. - Global Coordination: Multi-jurisdictional litigation (UK, US, Germany, China, India). - FRAND Rate Setting: Tying in with expertise in court-led FRAND determinations and negotiation history assessments. ONGOING: Parallel advice in the area of SEPs - Assistance with responding to consultations on SEPs. - Staff training to raise awareness and knowledge of SEPs and their role. - Litigation Funding/Insurance – links with appropriate funding entities to assist.
