The purpose of companies’ activities in intellectual property matters used to be mainly to obtain intellectual property right (IPR). However, many companies recently tend to use their intellectual property effectively to promote their businesses. To use their IPRs effectively, companies need to think their intellectual property activities not only from a technical-oriented point of view but also from a business-oriented point of view. INFORT regards intellectual property as business property, considers a business-oriented point of view to perform its intellectual property activities, and aims to create IPRs which will promote its clients’ businesses.
The IPR which promotes a business will bring a company the advantage of using the IPR exclusively for the period which competitors need to develop products avoiding the infringement of IPR. Or some competitor may give up entering into the market because of such IPR. Thus, in order to promote the business, it is necessary to obtain the IPR having a scope broad enough to gain the advantage mentioned above. It is not enough for a company to obtain the IPR having a scope covering only its products. To obtain the IPR promoting the businesses, INFORT investigates competitors’ situation by conducting market analyses and competitor’s patent analyses at the stage of the preparation for patent applications. And, at the stage of the patent prosecution process, INFORT makes a guideline, along which the client can promote patent prosecution processes, by analyzing patent information and using our original tools. By using the guideline to promote the patent prosecution processes, the client can establish a strong patent portfolio.

Standard Essential Patent (SEP)

SEP is a patent whose invention is included in the specification of a technical standard and thereby is inevitably used to produce or sell products which comply with the technical standard. Following globalization of economics, SEP has a large impact on a business for which an international standard is provided. SEPs are used, for example, for a cross license with a company having other SEPs or for a patent pool.

Obtaining SEPs

Since technical standards are generally determined through discussions among many parties, unexpected happenings may occur. To obtain SEPs in this situation, it is necessary to file patent applications and reply to office actions quickly, effectively and appropriately. For example, you may come up with a new idea during a discussion with other parties. However, the other parties may also come up with the same idea in the same timing. Thus, effective preparation for and timely filing of a patent application are necessary. Further, during the discussion for determining a technical standard, the second best idea may be adopted to the technical standard instead of the best idea. Even for this case, you can obtain an SEP with your idea by appropriate filing of a patent application and replying to OAs.

Using SEPs

SEPs can be used for a cross license with another company having SEPs, joining into a patent pool, or patent selling. However, patent evaluation in advance of using SEPs is necessary.
Even if a patent was supposed to be an SEP when filed and issued, the evaluation in advance of using it may find out that the claim of the patent does not match with the technical standard and the patent actually is not an SEP. Besides, a prior art which was not referred during the examination of the patent may be found later and the patent may be invalidated by it. Thus, SEPs actually cannot be used without evaluating their essentiality and patentability.
Further, patents for which evaluation by a third party has been finished can be sold smoothly.
INFORT has experienced patent attorneys who have worked for obtaining SEPs for more than 20 years or have managed patent pools of SEPs. And they as a team will help clients to obtain actually useable SEPs and to evaluate SEPs in advance of using them.

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