Introduction

In the exercise of Standard Essential Patents (SEPs), it is first necessary to determine whether the patent qualifies as a SEP, meaning its correspondence with the standard. By reviewing the relevant practices and regulations from different jurisdictions, standard organizations, and judicial bodies, a comprehensive approach for determining standard correspondence is provided. Additionally, based on the variability in standard development and the patent granting process, as well as the purpose of rights enforcement, it is recommended that during the drafting of SEP patents, claims should be made expansively based on literal correspondence with the standard.

Keywords: Standard Essential Patent, claim correspondence, standard correspondence.

Classification: D920.4; Document ID: A

In the process of determining SEP claim and standard correspondence, clear and operational rules for determination benefit both the patent holder and implementers of the standard by helping them efficiently reach consensus. The determination process involves various factors such as the subject of the determination, timing, jurisdiction, and the standard organization, all of which need to be considered and established separately. Based on the established correspondence determination rules, patent holders should tailor their patent application documents during the patent granting process to aim for the optimal correspondence with the standard.

1. Determination Rules

The fundamental rule for determining SEP correspondence is: if the implementation of a standard necessarily requires the use of a certain patent, then that patent is a Standard Essential Patent. This judgment must be based on specific correspondence rules, the object of judgment, and the timing of judgment.

1.1. Object of Determination

When determining SEP correspondence, individual claims, not the entire patent, should be evaluated. A SEP typically refers to a specific claim that corresponds to the standard. A patent may include claims that correspond to the standard as well as claims that do not, and the patent can still be referred to as a Standard Essential Patent.

1.2. Basic Infringement Determination Rules

The rules for determining SEP essentially belong to the domain of infringement judgment. For example, in China's national standard patent management regulations, the description is that a patent essential for implementing the standard is considered SEP; similarly, the Guangzhou High Court's work guide for handling SEP disputes mentions patents that must be used to implement a certain technical standard.

Here, terms like "essential," "must be used," and "cannot avoid" convey the same meaning: if a product implements the standard, it cannot avoid infringement. The determination criteria need to be understood from both a technical (technical essentiality) and commercial (commercial essentiality) perspective. From a technical angle, the judgment criterion is the usual standard in patent law: products that comply with the standard cannot avoid infringement. From a commercial perspective, "impossible" means that although a product technically complying with the standard may avoid the patent, the alternative solution is economically unfeasible, such as high costs. This kind of economic substitute typically refers to factors like manufacturing cost, design cost, and user preferences.

In practice, the application of these two rules depends on the standardization organization, with ETSI adopting technical essentiality rules, and IEEE adopting commercial essentiality rules. Overall, commercial essentiality is more commonly adopted. When making determinations, it is essential to combine the involved standardization organization, the jurisdiction of the patent, and other factors to decide which rule applies.

1.3. Timing of Determination

The timing of SEP correspondence judgment is another critical factor: at what point in time should a claim’s correspondence to the standard be assessed? This time point determines the scope of alternative technical solutions that can be considered by one of ordinary skill in the art when comparing the claim with the standard. In particular, if a claim includes a technical feature not found in the standard document, but there are no known alternatives that avoid infringement, the claim is considered to correspond with the standard.

Different standardization organizations may adopt different timing rules, such as IEEE using the time of standard approval as the judgment time point, and ETSI using the SEP declaration time. The earlier the judgment time point, the smaller the scope of the alternative technical solutions, which generally favors determining correspondence. To balance the interests of the patent holder and the standard implementers, it is crucial to confirm the time point in SEP determination to minimize disputes.

2. Types of Correspondence

When determining the correspondence between patent claims and standard documents based on the established rules, several types of correspondence scenarios may arise, such as literal correspondence, equivalent correspondence, implied correspondence, optional correspondence, and enabling technology correspondence. The following provides examples of these various scenarios.

2.1. Equivalent Correspondence

If literal correspondence is not possible, equivalent correspondence can be applied under the infringement judgment's doctrine of equivalence. If a feature in a claim is not the same as the one in the standard but can be considered by a skilled person as technically equivalent—achieving the same function and effect—then the claim is deemed to correspond with the standard.

2.2. Implied Correspondence

When making determinations, the context of the standard document and the patent's description may help interpret uncertain claim features, indicating implied correspondence.

2.3. Optional Correspondence

In this case, a claim may correspond to a feature in the standard described as optional, which is not strictly necessary for compliance with the standard but is considered when determining correspondence.

2.4. Enabling Technology Correspondence

Enabling technologies refer to necessary but not explicitly required technologies, such as operating environments or testing methods. If a claim includes such enabling technologies, it may still be considered as corresponding with the standard, as long as it is not solely directed at the enabling technology.

3. SEP Drafting Rules

Based on the above SEP correspondence determination rules, how should a patent holder draft or amend their application to achieve higher correspondence with the target standard document?

Literal Correspondence with the Standard

To ensure a clearer determination of SEP correspondence, the claims should be drafted as closely as possible to the anticipated wording of the standard document. This means using standard industry terminology and expressing technical concepts in the way the standard document would.

Multi-level Claim Layout

Given the evolving nature of standards and patents, it is recommended to adopt a multi-level claim structure. This means drafting claims that cover broader and narrower concepts, allowing flexibility to adapt to changes in the standard document.

Competitive Product Comparison

In the process of drafting SEP patents, attention should be paid to competitor products. If similar proposals are already in the standardization process, understanding how they relate to the applicant's claims can help in protecting the claims from being invalidated during examination.

Non-SEP Claims

SEP patents carry specific constraints due to the FRAND principle. To balance this, patent holders can also include non-SEP claims within the application, which are not subject to the FRAND restrictions, to strengthen their rights.

In summary, SEP correspondence determination must be based on the applicable jurisdiction and standardization organization’s rules, considering factors like equivalent correspondence, implied correspondence, and optional correspondence. When drafting SEP patents, a strategy should involve literal correspondence with the standard, multi-level claim layout, and consideration of competitive products and non-SEP claims to optimize patent value.