Navigating Patent Drafting and Prosecution of Standards-Related Technologies

“The collaboration and efficiency achieved by standards and the SDOs that create them advance the state of technology and business. However, this same collaboration creates crowded innovation spaces in which competitors are simultaneously innovating to solve the same problem.”

As far back as the Roman Empire, standardization has improved the efficiency of human endeavors. In the present day, as high-bandwidth communication and Internet of Things (IoT) applications expand, standardization continues to be key in advancing new technologies. From the standpoint of protecting intellectual property, however, the collaboration required to standardize a technology presents unique challenges, as industry competitors disclose and assess various options for the standard.

Standard Development Organizations (SDOs), each directed to a particular technical area, adopt standards that allow devices to communicate with each other and process information consistently. Notable examples of such SDOs are Advanced Television Systems Committee (responsible for the ATSC 3.0 standard), 3^rd Generation Partnership Project (responsible for the 5G standard), International Telecommunication Union (responsible for the HEVC and H.265), and Zigbee Alliance.

Technical experts representing companies or trade associations in an SDO may submit proposals for consideration and adoption. However, such proposals may include patentable solutions invented within the submitting organizations. By virtue of submitting such proposals for consideration, the solutions could be considered publicly disclosed – or, at the very least, disclosed to industry competitors.

Patent Drafting and Prosecution Considerations for SDO Participants

It is prudent for companies participating in an SDO to create internal procedures ensuring that innovations made in the course of their participation are fully protected. The First Inventor to File provision of the American Invents Act (AIA) increases the importance of filing relevant applications prior to submitting a proposal to an SDO, since an earlier time of invention alone may not be sufficient to secure patent rights. If there is not enough time prior to submitting a proposal to the SDO in order to draft a full application, a provisional application in raw form can be filed to secure the filing date.

Drafters of patent applications involving technologies proposed to SDOs should work closely with the participating experts, in order to anticipate possible variations or changes to the proposal. Upon drafting a full patent application, care should be taken to consider and disclose all conceivable embodiments of the invention, as well as possible implementations. A broad, comprehensive disclosure will allow for claims and continuation applications directed not only to the initial SDO proposal, but also to any changes introduced prior to adoption. In addition, a more thorough disclosure can address optimal implementations related to the standard.

Collaboration with experts participating in the SDO can also assist in understanding other possible approaches proposed by competitors. Because of the narrow focus of many technical problems addressed by SDO working groups, and because members are likely to pursue patents directed to their competing approaches, filings of members working on the same problem are likely to be used as prior art against one another. Whenever such competing approaches are mutually exclusive, it can be helpful to discuss them in the patent application, in order to differentiate how the claimed solution is better, or at least different. During prosecution, affirmative descriptions of such differences can support arguments directed to the criticality of various features of the claimed solution. It is also important for prosecuting counsel to keep abreast of the latest versions of the standard, in order to maintain claim correspondence. Such efforts are facilitated by a broadly drafted disclosure that considers alternative embodiments and implementations, which may be relied upon to craft optimal claim scope.

Patent Drafting and Prosecution Considerations for Standard Stakeholders

Patent applicants not participating in SDOs are nonetheless affected by adopted standards. Such applicants are likewise well-served by closely monitoring the changing standard landscape and mindfully drafting and prosecuting applications to maintain options for amendment and continuation applications. Many SDOs maintain email lists open to the public and online repositories of technical documents. On the one hand, such tools increase the chances of public disclosure of innovations proposed by SDO members. On the other hand, availability of internal documents allows all stakeholders in the standardized technology to keep an eye on SDO deliberations, and to steer research and subsequent patent filings in line with standard development.

The collaboration and efficiency achieved by standards and the SDOs that create them advance the state of technology and business. However, this same collaboration creates crowded innovation spaces in which competitors are simultaneously innovating to solve the same problem. Accordingly, the potential actions of SDOs and their member companies should be considered by intellectual property practitioners during patent drafting and prosecution, to ensure the full protection of patent rights for standards-related innovations.

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