Patenting Standardized Technologies: Scope of Claims, Disclosure and Essentiality Considerations

Best Practices for Patent Drafting and Prosecution

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Tuesday, January 14, 2020

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with guidance on the key considerations and implications of patenting standardized technologies. The panel will discuss proper claim scope, disclosure, enforcement, and royalty rates in the context of standardized essential patents. The panel will offer best practices for application drafting and prosecution of standardized technologies.

Description

Many industries rely on standards, making standard-essential patent (SEP) issues extremely important. However, relevant case law is unsettled and continues to develop. Patenting SEPs often focuses on what is essential to standardized technology, but this should not be the sole focus when preparing an SEP application. SEP considerations are critical and becoming more complex.

Counsel must consider who potential infringers are when drafting claims while also establishing the broadest scope of protection, all without rendering the claims unpatentable. Further, counsel should consider the potential impact of the claims on the potential royalty rates.

Additional considerations for those seeking to patent standardized technologies include the requirements of the standard-setting organization and the implications of declaring that a patent is essential to a standard.

Listen as our authoritative panel of IP attorneys examine the key considerations that companies should weigh when patenting standardized technologies. The panel will also offer best practices for application drafting and prosecution of standardized technologies.

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Outline

  1. Scope of claims--considerations
    1. Broad reach
    2. Who are potential infringers
    3. Impact on royalty rates
    4. Divided infringement
    5. Design-arounds
  2. Disclosure requirements for standards-setting organizations
  3. Declaring a patent or application essential to a standard--considerations
    1. Negotiating position during enforcement
    2. Royalties
    3. Likelihood of adoption as a standard
    4. Enforcement of licensing rights
    5. FRAND obligations and impact
  4. Drafting to survive challenges
    1. Invalidity
    2. Essentiality
  5. Recent case law
  6. Best practices

Benefits

The panel will review these and other vital questions:

  • What factors should patent owners and counsel consider when determining whether to declare a patent or application essential to a standard?
  • What is the potential impact of patenting standardized technologies on the enforcement of those patents?
  • How can practitioners draft and prosecute patent applications and claims to minimize the threat of a challenge to essentiality?

Faculty

Richardson, Ryan
Ryan C. Richardson

Director
Sterne Kessler Goldstein & Fox

Mr. Richardson’s practice focuses on post-grant proceedings before the U.S. Patent and Trademark Office’s...  |  Read More

Specht, Michael
Michael D. Specht

Director
Sterne Kessler Goldstein & Fox

Mr. Specht’s practice spans high value patent prosecution and inter partes matters, including Patent Trial and...  |  Read More

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