SEP portfolio management

Tim Pohlmann

Chapter 9 in A Modern Guide to Patents, 2025, pp 234-264 from Edward Elgar Publishing

Abstract: Research and development efforts of an increasing number of innovators around the world are pushing for a common technological frontier, investing billions in open standards. To recoup such investments, an increasing number of companies obtain so-called standard essential patents (SEPs), which are patents where claims read on the implementation of these standards. Obtaining and licensing SEPs, however, is not straightforward and involves much more than just patent prosecution and patent enforcement. To develop, maintain, and commercialize an SEP portfolio, a company's patenting activities must be aligned with its standards-development activities and integrated into its overall R&D strategy and business plan. A properly managed SEP portfolio generates value through licensing and patent transactions, while defending it against competitors. SEP portfolio management requires a company to make critical and often risky decisions about how to best use its SEPs to its advantage. In this chapter, the intersection of standards development and a company's patent portfolio strategy with regards to obtaining standard essential patents (SEPs) is described. This chapter elaborates on how to best manage cross-departmental teams for drafting patent claims while mapping them to standard sections and considering the vast amount of prior art. The chapter further discusses how to right-size an SEP portfolio and how access to patent declaration data, patent pool data, and standards contribution data supports SEP-related decision making. Also, the chapter debates how geopolitical challenges in times of crisis influence SEP portfolio management and concludes with discussing the challenges ahead for the 21st century.

Keywords: Management of portfolios of standard essential patents; Effective strategies; Portfolio optimization; Next generation of standards (search for similar items in EconPapers)
Date: 2025
ISBN: 9781035308590
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