Standard-essential patent
(SEP) and FRAND specialists

Our standard-essential patent (SEP) and FRAND experience

We advise across the full SEP lifecycle – from drafting and prosecution and developing claim-chart evidence, to FRAND strategy, negotiations and contentious proceedings – so standards-driven innovation can be protected, commercialised and scaled.

Below are examples of our recent work:

SEPs for a global electronics company and second largest patent filers at the EPO. HEVC is successor to the MPEG4 technology which was used to encode video information stored on Blu-ray Discs and transmitted in early high-definition digital video streams. We helped our client to  protect its investment in developing hardware/software for 4K ultra-high-definition TVs by securing standards-essential patents underpinning the coding schemes used by these next generation technologies.

Drafting numerous standards-related inventions for one of the world’s premier telecoms companies from standards contributions and change requests, frequently under intense time pressure and where technical accuracy and fallback positions are paramount.  Prosecution then followed the evolving and future direction of the standards to build the SEP portfolio, navigated through careful claim charting.   The team’s experience also includes prosecuting European patent applications and identifying standards mappings for Unwired Planet, who were involved in the seminal Unwired Planet v Huawei dispute in which the English courts set a global FRAND rate for the first time.

SEP/FRAND litigation. A member of our team was part of the legal team representing InterDigital in its FRAND dispute with Lenovo.  This covered both technical trials and the FRAND trial, culminating in the second time the English courts set a global FRAND rate and providing experience of, and insight into, FRAND disputes of the highest value and legal complexity.

Supporting licensing discussions. We understand the framework and dynamics of FRAND licensing negotiations and the importance critical portfolio analysis and valuation methodologies play.  We have evaluated claim charts of major SEP holders to assess essentiality in support of global cross-licensing negotiations.

Assisting clients with monetisation campaigns and litigation readiness. Building a SEP portfolio is one thing.  Selecting the right patents to support royalty demands and, if necessary, assert through litigation is another.  Our team members have worked with multiple licensing companies to identify the strongest SEP candidates for the task at hand across multiple standards including HEVC, 3GPP and Wi-Fi.  By leveraging their technical and legal expertise,  they selected candidates that supported the client’s commercial aims and mitigated risks from any future litigation.