How a Telecom Infrastructure Provider Leveraged Ingenious’ Extensive Standard Essential Patents Analysis in Identifying New SEPs for FRAND Licensing

The Challenge

Our client, a telecom company in Europe, had a meeting with prospective FRAND licensing targets for licensing negotiations in six months. Thus, the client wanted to improve the 3GPP standard relevance of the patent portfolio for 5G technology and identify new Standard Essential Patents (SEP) pertaining to 5G technology from the patent portfolio. In-house counsels of the client wanted a strategic approach with a quick turnaround time to identify new 5G SEP patents with the inclusion of analysis of 4G declared patents for 5G essential applicability and analysis of newly granted patents. The client wanted an in-depth technical analysis for increasing the number of patents for FRAND licensing.

Our Solution

A Standard Essential Patent (SEP) is a patent that claims an invention used to comply with a standard such as 4G, 5G standard. To identify such patents from the patent portfolio, Ingenious created a custom approach and split the workflow into the following segments:

1. In-depth understanding and analysis of 5G Standard specifications.

2. Identification of the potential patents from the patent portfolio for 5G analysis.

3. In-depth analysis of 4G declared patents from the portfolio.

4. Evaluation of 5G declared patents.

A detailed analysis of the 5G specification from 3GPP was made. Physical layer, MAC layer, and higher-layer standard specifications were analyzed and understood in detail. Standard specifications published by 3GPP were analyzed in detail.

Relevant Patents Selection and Claim Chart Preparation: Using a quick manual analysis, new patents from the client portfolio were identified about the 5G technology. Analysis of independent claims was performed to mark a patent as Relevant/Not Relevant for 5G technology. Then, a quick analysis was performed based on the 5G standard specification to prune the patent list further. Then, a detailed analysis was performed for the selected patents for 5G standard specifications, and claim charts were prepared with analyst comments.
Conversion of 4G Charts to 5G Charts: 4G declared standard patents were analyzed against the 5G standard specifications. The 5G standards corresponding to the 4G specification were analyzed to prepare the mappings. Information on patents declared essential to 3GPP 4G standards was accessed from the ETSI website, and corresponding 5G patents were analyzed for mapping.
Claim Chart Evaluation: A review of the claim charts already prepared by the client for 5G was done to check for non-essentiality arguments.
Meeting Documents and Standard Contribution: We supplemented the claim charts with relevant meeting documents and standard specification contributions of our client to increase the confidence of a prospective buyer/licensor in the client’s patent portfolio and claim charts.
MS Word-based claim charts were prepared for each patent showing a detailed mapping for each claim element with the 5G standard specifications. Claim charts were prepared on US, JP, and IN patents to cover various geographies for the patent portfolio. Each essential patent was defined and categorized in Standalone 5G (control signaling does not depend on the 4G network). Non-Standalone 5G patents (control signaling of 5G Radio Networks can be done using 4G Core).

New 5G Claim Chart for 5G Standard - Ingenious e-Brain

The Impact

Our team prepared 100 claim charts (40 new mappings on 5G standard specifications and converted 60 already 4G declared patents to 5G essential patents). The claim charts were delivered on a rolling basis so that in-house team of the client could review the charts and provide periodic feedback. We were able to finish the project in three months, thus, giving three months to the client before their meeting.

The claim charts prepared by our team allowed the client to increase the SEP count in the patent portfolio. The client was able to drive more revenue using the FRAND licensing and the charts across multiple geographies helped client to target licensing under FRAND with major players.

The client started analysing the pending applications with the 5G specifications to prepare a 5G SEP ready patent portfolio. Client was able to identify the valuable patents and drive the R&D and growth of the portfolio in the technological areas with a smaller number of SEP.

FRAND licensing was executed between the client with several major smartphone manufacturers.