What is IP?
IP is often thought of as the legal rights assigned to particular intellectual assets such as patents and trademarks. A legal perspective may view these forms of IP in the sense of certainty of protection, or scope and opportunity of enforcement. However IP includes different types of material that provide value to organisations
From a commercial perspective IP assets may be seen as defensive or aggressive assets that can be leveraged in commercial negotiations, contracting, licensing and litigations.
The more intangible forms of IP require a solid understanding of the underlying technology and science, and a clear linkage to the product or service that it supports. Only a combination of the commercial, legal and technical view points will provide a clear view of what is ‘good’ IP and what is ‘bad’ or incomplete.
IP includes different types of material that provide value to organisations such as:
- Trade Marks
- Trade Secrets
- Database Rights
- Domain names
- All other forms of IP, such as confidential material
Standards Essential Patent Analysis
Intellectual Property Rights become Essential when they are “embedded” in the standard. Through the standardisation process companies contribute their own R&D through technical proposals. Many of these will be covered by patents owned by the contributor or third parties. If the standardisation process adopts that particular feature the associated patent may, by reference, become Essential to the standard.
All standard-compliant equipment then infringes the patent – it is unavoidable. The contributor of the IPR is usually a company involved in the standards process and almost always retains ownership of the IPR, although patent owners do occasionally divest their patents, or subsets to entities better placed to enforce or monetize them.
If a patent is a SEP then it is de facto infringed by all standards compliant products. This is the key “power” of SEPs. For modern consumer electronics such as mobile phones that rely on standards it is sufficient to look at marketing material, or product manuals to determine if a product supports a particular technical standard. If the product complies with the standard, and the patent is SEP to the standard, the product de facto infringes the patent.
SEP analysis then avoids the need of expensive reverse engineering of the target product. In the case of modern consumer electronics reverse engineering can be very expensive – particularly where the patented invention is part of a silicon chip that must be investigated. Not only that, but for non-SEPs each individual product type needs to be investigated separately – just because version 1 of a product infringes, does not mean version 2 would. For a SEP covering a core mandated feature, entire product lines and multiple variant can be captured.
SEP analysis relies on building a mapping between the patent claims and the technical standards.
Typically there is a presumption of validity: that is essentiality mapping only considers the technical mapping of the patent claims as granted with the technical standards available at the time of the review.
We believe good IP management allows business to protect its competitive advantage; to generate returns on R&D investment and to secure investment and finance. Modern businesses neglect their IP assets at their risk as poor IP management gives away value and reduces barriers to entry for competitors compromising the organisation’s capabilities.
To manage IP well business must adopt a combination of commercial, legal and technical expertise – but always with a pragmatic focus to actively manage and exploit the IP.
Cubicibuc supports its clients by:
- providing confidential and independent technical services to evaluate IP assets
- performing IP audits, patent mining and landscaping exercises
- developing IP strategies to support commercial negotiation, licensing and litigations
- providing independent technical expert reports
We work with businesses ranging from smaller start-ups to mature multinationals; from early stage invention capture through to exploitation and monetisation of IP assets.
To discuss how Cubicibuc’s expertise can help your organisation manage and exploit IP, please contact us now.