Common Mistakes to Avoid in SEP Analysis

A patent mentions 5G, Wi-Fi, or video coding. It appears in a declaration database. Its wording looks similar to a technical standard.

Does that make it a standard essential patent?

These details can help identify patents for review, but they do not establish essentiality. SEP analysis needs a careful comparison between patent claims and the requirements of a specific standard.

WIPO defines a standard essential patent as a patent protecting an invention essential to implementing a particular technology standard.

For businesses reviewing a licensing proposal or patent portfolio, avoiding the following mistakes can make the assessment more useful.

1. Treating a Declaration as Proof of Essentiality

A common mistake is assuming that a declared patent has already been independently checked.

ETSI states that it does not investigate the essentiality of the rights listed in its relevant IPR reports. A declaration should therefore be treated as a starting point for research.

What to do: Check the patent claims against the relevant standard provisions. Record the evidence supporting each finding rather than relying only on a database entry.

2. Reviewing the Abstract Instead of the Claims

A patent abstract gives a short overview of the invention. It does not define the full scope of protection.

A patent may discuss wireless communication broadly while its claims require a particular sequence, component, or processing method.

What to do: Base SEP essentiality analysis on the relevant claims. Read the description and prosecution history where needed to understand the claim language. For a dependent claim, include the requirements it inherits from earlier claims.

3. Using the Wrong Standard Version

Technical standards change. A feature may be introduced, revised, or removed across releases.

Mapping a patent to a broadly named technology such as “5G” leaves important questions unanswered.

What to do: Identify the exact specification, version, release, and feature being assessed. Keep those details in the report so another reviewer can follow the same evidence.

4. Assuming Similar Words Mean the Same Technical Function

Patent documents and standards may use similar terms while describing different operations. They may also use different terms for closely related functions.

A keyword match is useful for finding passages, but it is not enough to establish a technical connection.

What to do: Use patent-to-standard mapping to explain how each claim requirement corresponds to the standard. Examine the relationships, conditions, and sequence of operations—not just individual words.

For example, finding “transmitting a signal” in both documents does not establish a match if the claim also requires a specific timing condition that the cited passage does not support.

5. Overlooking Optional Features and Alternative Implementations

Standards can contain optional features and multiple implementation choices.

A patented approach may relate to one option without being required by every compliant implementation. Equally, a feature that is optional overall may contain requirements that become mandatory when that feature is implemented.

What to do: State the scope of the finding clearly. Explain whether it relates to the whole standard, a particular feature, or a specific implementation option. Assess the available alternatives before reaching a conclusion.

6. Preparing Claim Charts Without Clear Evidence

A claim chart is difficult to assess when it contains broad references or unexplained conclusions.

What to do: Prepare SEP claim charts that identify each claim requirement, the relevant standard clause, and the reasoning connecting them. Show evidence gaps and assumptions openly.

A useful chart allows another reviewer to understand why a mapping is supported—and where it remains uncertain.

7. Confusing Essentiality with Infringement or Validity

Essentiality, infringement, and validity answer different questions.

Essentiality examines the relationship between a claim and a standard. Infringement examines the relationship between a claim and a particular product or process. Validity considers whether the patent meets the applicable legal requirements.

What to do: Keep these findings separate. An essentiality assessment alone should not be presented as proof of product infringement, patent validity, or a particular royalty rate. UK licensing guidance treats portfolio evaluation and FRAND terms as matters requiring broader technical, commercial, and legal consideration.

Also Read: What Information Do You Need to Start an SEP Analysis?

8. Applying One Finding to an Entire Portfolio

A strong mapping for one patent does not establish the essentiality of every patent in the portfolio.

Related patents can also have different claims across countries.

What to do: Define which patents, claims, and jurisdictions were reviewed. If the assessment uses a sample, explain how it was selected and the limits of drawing portfolio-wide conclusions.

Start with a Clear Review Brief

Before requesting SEP analysis services, share the patent list, relevant standards, target countries, existing claim charts, and the decision you need to make.

A focused review through Standard Essential Patents (SEPs) Services can help organise the evidence and identify the questions that need deeper investigation.

Good SEP analysis makes its reasoning clear. It helps your business understand what the evidence supports, what remains uncertain, and what to review next.

Read More: SEP Analysis vs. Patent Infringement Analysis: What Is the Difference?

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