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ARTICLE · 07 APRIL 2025

Best Practices For Drafting And Prosecuting Standard-Essential Patents

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Standard-essential patents (SEPs) are highly valued in any patent portfolio.

United StatesIntellectual Property
Yi Yu, Ph.D
Yi Yu, Ph.D
Elliot C. Cook
Elliot C. Cook
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Standard-essential patents (SEPs) are highly valued in any patent portfolio. To build a robust SEP portfolio, it is critical to follow practices that survive the Examiner's scrutiny while maintaining sufficient breadth for essentiality to current or future industry standards. It is also important to generate quality SEPs that can survive invalidity attacks in both litigation and administrative challenges.

Introduction

SEPs are valuable because they protect technology essential to implementing a specific industry standard and can potentially be licensed to a large number of companies producing products in that market. SEPs are obtained through the patent application process, which involves examination at the patent office for meeting necessary requirements such as novelty, non-obviousness, and subject matter eligibility. It is common for SEP applications to undergo an amendment process when the patent examiner finds the original claims filed in the application do

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