How to Do a Prior Art Search for Standard Essential Patents

To search prior art for SEPs effectively, patent searchers need to think beyond traditional patent search tools and techniques. In this article, we examine how to do a prior art search for standard essential patents.  

When it comes to patent searching, there is no such thing as a ‘one size fits all’ approach. Depending on your need, field, or stage of innovation, a number of different patent search services may be necessary, including: 

• Patentability, novelty or pre-application 
• Freedom-to-operate, infringement, right-to-use or clearance
• (In)validity
• State-of-the-art, collection or landscape
• Biosequence, formulation or chemical/chemistry
• Standard essential patents (SEP)
• Designs 

→Watch our recent webinar ‘Beyond Traditional Prior Art Searching’ to find out more about Questel’s patent search tools and services 

In this article, we look in more detail at prior art search technology for standard essential patents (SEPs). 

Why and How to Do a Prior Art Search for SEPs

By setting a benchmark for new technologies, technical standardization helps to boost collaboration, thereby supporting product development and unifying global markets. However, not every company that is developing innovation in a specific domain is a member of the standard-setting organizations (SSOs) that develop those standards. As such, it is important for companies to search against the claim technologies protected in SEPs. 

SEPs can apply across every industry. Well-known examples include those that apply to telecoms and wireless communications, including WiFi, Bluetooth, near-field communication (as illustrated below), and video broadcasting. 

In the process of their creation, each SEP will generate a range of prior art documents. For example, prior art documents from SSOs typically include technical proposals submitted in meetings, change requests, meeting minutes, draft versions of the standards, and email exchanges between the meeting participants. 

That prior art is vital knowledge for innovators from both a patentability search and invalidity search point of view. The first type of search is required before patent filing for new inventions; the second offers an essential check before moving forward with an infringement action or any licensing, negotiation, or litigious activities. 

Typically, SEP prior art will comprise technical solutions that are broadly related to the topic of the patent. For example, various members of an SSO may put forward their own technical proposals to a stated problem but which are not used in the final solution. Despite not being used, those technical proposals still form part of the prior art. The same may apply to discussions in meetings where additional information may be shared that isn’t included in the accepted technical proposal. 

How to Do a Prior Art Search for SEPs: Challenges and Solutions

One of the most obvious challenges for searching SEP prior art is the difficulty of finding the necessary technical proposals, meeting documents, and draft standards. Attempting to find this kind of information via an online search is time-consuming and fraught with risk. You need to have a very thorough knowledge of the technology and relevant SSO working groups to ensure you are searching comprehensively and in the right places. 

Likewise, while each SSO typically has its own search interface, many have limited filters and little uniformity with other SSO interfaces, even where the technology is overlapping. The documents they contain will typically also feature a lot of acronyms, abbreviations, and phrases that are specific to the standards. Without knowledge of the terminology, it can be difficult to search successfully. 

To resolve these challenges, it’s important to identify specific sources and use the best combination of available filter options to narrow down results effectively. To overcome the issues with standard-specific acronyms, abbreviations, and phrases, the searcher must also have prior experience of working with SEPs and standards. As SEPs are usually involved in licensing negotiations and litigations, it is critical to comprehensively search prior art by entrusting the job to searchers with a robust knowledge of SEPs and standards. 

To find out more about how to do a prior art search, watch our webinar ‘Beyond Traditional Prior Art Searching’ or contact our team of experts for specialist advice and support.