The way to a valuable 5G standard essential patent
Jian Zhang and Jinhua Deng of Liu Shen & Associates consider why a valuable 5G SEP requires a proper patent drafting and prosecution strategy
A 5G-connected world is approaching, with not only people but also devices interconnected. 5G is envisioned to become a key infrastructure in the future. As a result, companies are being motivated to increase their investments in 5G-related research and development (R&D) and patents, with an expectation of obtaining valuable 5G standard essential patent (SEP) portfolios.
However, the way to a valuable 5G SEP is by no means easy. It requires a proper patent drafting and prosecution strategy. The early-stage decisions may significantly influence the value of the SEPs.
First, the claims should be carefully designed with a good claim hierarchy and an appropriate scope. For example, a claim set with a good hierarchy may include a generalised independent claim, some dependent claims with narrower scopes which may be helpful to the inventiveness and potentially read on the standards, and some further dependent claims with even narrower scopes which characterises technical details and may be further helpful to the inventiveness.
Embodiments with different generalisations in the patent specification are also very important, from the perspective of not only the support issue, but also potential amendments in the prosecution. There is often a case where a detailed embodiment fails to read on the standards but a generalisation thereof can read on the standards. Since no re-generalisation is allowed during prosecution in China, embodiments with different generalisations may be beneficial to preserve more amendment options in terms of both essentially and validity.
Second, it is preferable to draft sets of claims, with each set from a single side of a system involving operations among multiple sides, for example, a user device, a base station, or a core network. The interaction with other sides of the system may be reflected in signals or messages exchanged therebetween. This way, the divided infringement may be avoided.
Third, it is recommended to use a term as commonly used in the standards throughout the claims and the specification. If a new term is created by the inventor, a clear definition should be given in the specification, with the extensibility and applicability to standards of further generations being considered.
The standards may not be finalised until years after filing. Therefore, the applicant should make good use of amendment opportunities during prosecution, including the opportunities for making voluntary amendments prior to the issuance of an office action and the opportunities for making necessary amendments when responding to an office action, to enhance the value of the potential SEP in terms of both validity and essentiality.
Whenever the amendment is to be made, reference to the target standard is strongly recommended, and at the same time, maintain a claim chart to reflect the matching between the claims and the target standard as well as the support for the claims by the specification.
Further, since claim amendments in an invalidation procedure can only be made in limited ways in China, a validity analysis by an independent third party is also recommended. This way, the decision to make amendments may be based on more comprehensive information at hand.
Further, the applicant should be very cautious about claim construction when responding to the office action, to avoid the potential claim estoppel trap. It is advisable to cite the original language in the specification and keep statements brief and to the point, especially when the claims are to be amended.
Other strategic considerations
Early filing date
A potential 5G SEP is especially sensitive to an early filing date, compared to other applications. Since contributions need to be uploaded by a due date before a standard setting organisation (SSO) meeting, the number of prior art documents may vary greatly even if the application date is only one or two days apart.
A filing date should be established as early as possible and before the uploading date. If practical, filing a provisional application in a country which allows such application, e.g. the US, is a good option.
The divisional application may be useful to keep the patent family pending while the standards are evolving. Since a divisional application may be filed as long as the parent application thereof is pending in China, it provides a considerable time for the applicant to wait until the target standard is finalised. To buy the time for waiting for the finalisation of the target standard, a request for delay of substantive examination may be considered. Thus, the claims of the divisional application may be adapted to read on the finalised standard.
Some may view a 5G portfolio as a global portfolio as long as the families include patents in a few main jurisdictions. While other may view that a portfolio should not be considered globally if the portfolio does not reflect a wide selection of geographies. While there has not been an agreement yet in this regard, the applicant needs to consider this when planning a portfolio.
In summary, the expected lucrative licensing revenue has motivated applicants towards building up a strong 5G SEP portfolio. Since strategic decisions taken early in the life of the 5G application may impact on the revenue finally obtainable, a comprehensive strategy well-tuned should be made to optimise the whole procedure, which calls for the wisdoms and skills of patent applicants or attorneys.
Liu Shen & Associates
T: +86 10 6268 1616 3085
Jian Zhang is a partner at Liu Shen & Associates. She specialises in patent-related services such as patent prosecution, patent re-examination, patent invalidation, patent litigation and patent analysis, with a focus on telecommunication, artificial intelligence, internet of things and signal processing.
Jian has handled many patent disputes for international and domestic enterprises, especially infringement litigations and invalidations relating to SEP and non-SEP in the telecommunications field.
Jian received her master's degree from Beijing University of Posts and Telecommunications with a major in information and communication systems.
Liu Shen & Associates
T: +86 10 6268 1616 6922
Jinhua Deng is a patent attorney at Liu Shen & Associates. She specialises in various patent-related matters, including patent drafting, prosecution, reexamination, invalidation and patent analysis, with a focus on signal and information processing, communication, video coding and artificial intelligence.
Jinhua has extensive experience in patent relevance and stability evaluation, engaging in many communication SEP v. standards analyses, and stability analyses for both commercial patents and SEPs.
Jinhua has a master’s degree in signal and information processing from the University of Electronic Science and Technology of China.