Preparing And Filing SEP Applications

When drafting a patent application that the applicant hopes will become a standard essential patent (SEP) once granted, there are a number of considerations that need to be kept in mind.

The claims form a critically important part of any patent application, as it is the claims which define the protection which is sought. It is the features recited in the claims of a granted patent which will need to "map" to a standard in order for it to be deemed a SEP.

A standards invention may involve novel aspects at multiple entities that are in communication with each other. In a telecommunications context this may involve a user equipment (e.g. a mobile phone) in communication with a network entity (e.g. a base station). When drafting claims for such a standards invention it is important that the patent application includes claims directed to most, if not all, of the entities that are performing novel steps. Having claims specifically targeted at different entities