Overcoming the problem of SEP invalidation: systematic construction and practice of evidence search strategies
I. Introduction
Standard Essential Patent (SEP), as a combination of technical standard and patent right, is deeply bound to industrial technical standards and has become the core competition barrier in the fields of communication and multimedia. However, the invalidation procedure of SEP has been recognized as a "hard bone" of the combination of technology and law because of its technical complexity, the relevance of standards and the difficulty of evidence search. How to accurately locate the prior art evidence that can destroy the novelty or inventiveness of a patent is a major challenge for patent lawyers and search teams.
This article takes two typical SEP invalidation cases as the starting point, combined with the de-blocking filtering technology patent in H.264 standard and the 5G/4G interworking technology patent in 3GPP TS 23.502 standard, systematically expounds the evidence search strategy of SEP invalidation, deconstructs the time-line correspondence between the standard organization document and the patent technical scheme. The article refines the reusable trinity search method of "standard traceability, term mining and cycle locking", in order to provide a reusable operation scheme for the practical field.
II. The legal framework and core difficulties of the declaration of SEP invalidation
(1) The uniqueness and legal basis for invalidation declaration of SEP
The "standard necessity" of SEP makes it naturally monopolistic, but according to the FRAND principle (fair, reasonable and non-discriminatory), the patentees need to authorize the patents under reasonable conditions. Invalidation procedures (e.g., Article 45 of PRC Patent Law) serve as a key means of balancing the patentees with the standard enforcers by challenging the validity of the patents.
The core legal standard for SEP invalidation is the same as for ordinary patents, requiring to prove that the same or substantially same technical solutions existed before the filing date of applications (Article 22 of the PRC Patent Law). However, the particularity of SEP lies in that its technical solutions are often directly derived from the public documents (such as meeting proposals and technical reports) of the standard-setting organization, and the evolution process of the standard may contain a large number of prior art clues.
(2) Three difficulties existed in the search conducted for declaring the SEP invalid
- The decentralization and standardization of standard organization documents: the documents of ITU, 3GPP and other organizations mostly exist in the form of meeting minutes and temporary proposals, lack a unified index and search entrance, and the search efficiency is low.
- Spatial and temporal differences of technical terms: there is a dynamic evolution of technical expressions in the process of standard formulation (for example, the definition transfer of "APN-AMBR" parameter in different versions of 3GPP in case 2).
- Precise locking of time window: It is necessary to combine the patent priority date and the standard meeting cycle to locate documents within the key time period to avoid "finding a needle in a haystack".
III. Systematization strategy of invalidation evidence search
(1) Strategy 1: Standard organization traceability -- lock the core working group and timeline
Case 1 Analysis: The patent involved corresponds to the standard H.264, which relates to how to eliminate coding distortion to reduce data processing volume. The evidence for the successful invalidation of the patent involved is the International Telecommunication Union (ITU) Standard document (VCEG-O50) "Medium Complexity Loop-Filter".
Evidence search process: Since this case involves the technology of deblocking filtering in image processing, on the one hand, the relevant schemes of deblocking filtering and eliminating coding distortion in patent literature were locked in the search process. On the other hand, since the case involves the H.264 standard, which is the research content of ITU-T SG16 study group responsible for multimedia, the search team checked the research content of various working groups under the SG16 study group, and focused on the standardization of video coding VCEG working group. And searched the work of the VCEG working group around 2001 (the earliest priority year) to locate the above evidence, which was made public one day before the earliest priority date of the patent involved, and the process involved is basically the same as the method of the patent involved.
Operating points:
- Organization structure analysis: Clarify the hierarchical structure of the standard setting organization (such as SA, RAN and other working groups under 3GPP), and determine the working group of technology belongs.
- Timeline cutting: Based on the patent priority date, traced forward the key stage of standard formulation (usually within 1 year), and narrowed the search scope.
(2) Strategy 2: Technical term extension and dynamic tracking
Case 2 Analysis: The corresponding standard of the patent involved is 3GPP TS 23.502. The invention point of the patent is to provide a specific QoS parameter (APN-AMBR) configuration scheme for realizing the interworking between 5G system and 4G EPS system. Specifically, when UE works in 5G system, it provides UE with specific QoS parameters (APN-AMBR) for 4G EPS system; During a move from a 5G system to a 4G EPS system, the UE may use the previously provided APN‑AMBR to configure the APN‑AMBR for PDN connections in the EPS. Two 3GPP proposals, S2-172012 and S2-173522, were the evidences for the successful invalidation of the patents involved.
Evidence search process: The patent involved involves the interworking technology of 5G to 4G EPS system, and the search team first preliminarily locked the meeting group and discussion period involving this technology in the formulation of 3GPP standards. The interworking content of 5G to 4G EPS system was discussed in the SA WG2 meeting of 3GPP. Among them, the relevant part of the content began to be involved in the SA WG2 Meeting #119, and the relevant content was mainly discussed and the program was improved from the SA WG2 Meeting #120. The search focus on the standard proposals from SA WG2 Meeting #119 to SA WG2 Meeting #126 (near the filing date of the patent application involved). The proposals involving key words such as QoS, mapping, handover, conversion, interworking, PDN, APN and AMBR within the scope were reviewed, and the above two proposals were finally screened out, which proved that the patent scheme involved in the case had been disclosed in advance.
Key points of operation:
- Term base construction: Based on patent claims, extract keywords of technical feature, and expand synonyms, near-synonyms and abbreviations.
- Meeting cycle alignment: Map the filing date to the meeting schedule of the standard organization to determine the scope of the meeting to be searched.
IV. Conclusions and suggestions
The essence of the SEP invalidation is a "race against time" evidence-digging contest. Through systematic search strategies -- from standard organization traceability to technical term extension to meeting cycle locking -- the hit rate of evidence can be significantly improved. In the future, with the application of artificial intelligence technology in semantic analysis and document clustering, the search efficiency is expected to be further improved.
In addition, a knowledge base of standard organizations should be established to track the movement of the working group in real time. It will be more helpful to the accuracy and effectiveness of SEP invalidation search if we can attract the participants of standard formulation to join the search team and strengthen cross-field cooperation.
SEP Invalidation is not only a legal confrontation, but also a comprehensive game of technical insight and strategy enforcement. Only by integrating "standard thinking" into the whole process of evidence search can we overcome the ultimate problem in this patent field.