Essentiality

Essentiality is the quality of a patent at least one claim of which is necessarily implemented by any product or process complying with a technical standard. A essential patent for a standard cannot, by definition, be worked around by anyone wishing to comply with the standard. Essentiality conditions the FRAND licensing obligation, the assessment of royalties and access to injunctions. It is declared by holders but is only verified by the judge or by independent experts.

Technical and commercial essentiality

First, technical essentiality refers to the case where the standard cannot be implemented without reproducing the invention, no technical alternative being possible. Next, commercial essentiality refers to the case where an alternative exists in theory but is not viable in practice, for reasons of cost or interoperability. The intellectual property rights policy ofETSI adopts a technical definition. Finally, essentiality is assessed claim by claim and version by version of the standard: a patent may be essential to an option of the standard without being essential to its mandatory core.

Proving essentiality

Proof rests on a chart mapping each feature of the claim to the passages of the technical specification of the standard. The holder establishes it to demonstrate infringement, since the product’s compliance with the standard is then enough to establish implementation of the invention. The defendant contests essentiality, the validity of the patent or the compliance of its product with the relevant part of the standard. Economic studies show that the share of declared patents that are actually essential is a minority, which fuels the debate onroyalty stacking. The proposed European regulation on standard-essential patents, which provided for essentiality checks by independent evaluators, did not come to fruition.

Key points

In practice, essentiality is the first battleground of a FRAND dispute, before validity and rate. Demonstrating it requires a cross-reading of the patent, the standard and the product, often with a technical expert. The firm conducts these analyses, as presented on the page FRAND and standard essential patents counsel, and on the entry essential patent declaration.