Background: Essentiality CheckTM was created in response to the unprecedented and unsustainable growth in the number of dubious patents claimed to be related to ICT (information and communication technologies) technical standards. These technical standards define interoperability among next generation communications systems (e.g., LTE, LTE-A, 5G, 5G-A and soon 6G) and multimedia encoders (e.g., HEVC and VCC) which will radically enhance and augment human perception.
ICT-focused patents with at least one patent claim demonstrated to be directed to an essential function described in the normative description of an ICT technical standards are known as "standard essential patents" and have significant value. That is, holders of standard essential patents can extract hundreds of millions and even billions of dollars from implementers of technical standards to license their portfolios of patents. These patents alledged to be essential to a technical standard can be licensed by large or small companies who participated in the developing ICT technical standards. Alternatively, patents can be licensed by various non-practicing patent licensing entities acting on behalf of the standard contributors or by third parties who acquired (or "developed") portfolios of patents seeking to monetize the those patents on behalf of patent pools, academic institutions or as part of a legitimate licensing business model. More recently, implementers of technical standards who typically in the past did not file large numbers of patents related to standards participation now find value developing patents organically as well as acquiring large portfolios of patents. The reason for this change in behavior by implementors is to argue for reduced licensing royalties demanded by owners of standard essential patents in accordance with a royalty formula called “Top Down” which was endorsed in the United States Federal District Court case of TCL v. Ericsson.
The preferred route of creating patents essential to a technical standards document is from an ICT focused patent application filed with a patent office describing a successful standards initiative (e.g., work items submitted and adopted by technical standards work groups). Patents are ideally “declared” at some point in the standardization process in accordance with policies set forth by a particular standard development organization (SDO). Many ICT-focused patents which might be related to the standard are not declared many times because of the costs and difficulties of managing portfolios of patents related to standards contributions. Further, there is technically no mandate in SDOs that all delegates identify every ICT focused patent application and/or patent during standardization (and there are limited circumstances where any real penalty results from not providing a comprehensive list). In recent years many patent applications related to failed standards contribution are no longer abandoned as they might still be "reworked" into an standard essential patents. That is, patent applications or issued patents directed to failed standards contributions could become dubious patents by amending their claims along with developing "interesting and creative" claim charts. These likely bogus patent claims can be created by either the original owner or sold on the secondary market as a potential standard essential patent (who might also be "craftly" at amending patent claims and developing claim charts). Various patent prosecution law firms and AI tools have appeared on the market in recent years to offering to provide essentiality assessment to support and enhance so-called “standard essential patent mining” efforts. Patent mining is the process of searching the written description of one or more pending patents applications with key words or phrases and/or by syntax searching or other types of search. The patent mining searches use automated processes, such as traditional Boolean logic search engines, or more advanced AI and Machine Learning algorithms. The general idea of patent mining is to locate vague and obscure language in the written description of one or more pending applications that captures the essence of a feature, function, or process described in the normative section of a frozen ICT technical standard. Thereafter, a set of claims is drafted using the identified language in the written description with an accompanying claim chart drafted to map the proposed claims to an ICT technical standard (to guide the prosecution of the newly proposed standards-focused patent claims during patent prosecution).
In response to the above (which could be characterized as a standard essential patent arm's race"), Essentiality CheckTM was created to handle FRAND licensing negotiations by using specialized tools to evaluate the patent claims of the asserted patents to assist in building defensive strategies to respond to PAE's demand to take a patent license. Our patent evaluation licensing tools include both technical and patent law experts (SEP CheckTM) as well as software tools (Essentiality ScoreTM) which can assist your in house legal teams in assessing whether asserted patents are bogus or if the patents have patent claims legitimately to mapped to a key function or feature in a technical standards document.