Standard Essential Patents (SEPs)

A comprehensive understanding of all aspects of SEP protection and enforcement informs our work with clients in developing robust SEP portfolios, negotiating licensing agreements that maximize revenue while maintaining fair access to the technologies, and resolving disputes in high-stakes SEP litigation. Our professionals have advanced technical degrees in all major SEP-related technology fields—from computers to telecommunications to the automotive sector—as well as decades of experience participating in standards settings organizations and handling complex IP matters across multiple venues.

Robust SEP portfolios start with strategic development and informed opinions

Our attorneys work closely with clients to build global SEP portfolios, executing on plans tailored to their goals and budget. We help procure patents that cover standard essential technologies and are resilient to post-grant challenges; develop effective national and global filing strategies; and ensure compliance with policies of the corresponding standards setting organization. Drawing on deep technical expertise and legal acumen, we focus on securing high value patents that provide the best possible protection to our clients’ inventions.

Developing a profitable SEP portfolio often involves assessing patents and applications declared essential and providing opinions on essentiality and invalidity. Finnegan professionals are particularly well versed in evaluating patents involving telecommunication and video compression standards, such as 4G, 5G, 802.11, Bluetooth, H.264/MPEG-4 AVC, and H.265/HEVC.

Complexity is standard in SEP licensing and litigation

Handling SEP litigation and license negotiations requires a particular type of experience. SEPs not only involve multiple jurisdictions and different technologies, but they are also subject to special licensing rules that often implicate antitrust law. SEP litigation also raises numerous issues regarding damages and injunctions that do not occur in other types of patent litigation. Finnegan delivers full-scope services related to SEPs for both innovators and implementers in key jurisdictions like the US, UK, and Europe, including the Unified Patent Court (UPC), and can provide a truly global approach tailored to your individual needs and product strategy.

If a patent is truly essential to a standard, it can create tremendous business value, because if no licensing agreement has been concluded, practicing the standard, by definition, will infringe a true SEP. In this regard, multinational licensing experience in SEPs is just as important as litigation experience for multijurisdictional patent disputes all around the world. Finnegan’s licensing experts assist both patent owners and implementers in navigating the complexities of SEP license negotiations. Our patent litigators enforce SEPs against infringers or defend against SEP assertions, regardless of the size of the litigation or however many jurisdictions it may encompass.