“We would see much more deals and less friction with SEPs and FRAND if people were to do things with more rigorousness and transparency!”
Johanna Dwyer is the founder and CEO of QipWorks, a global IP consultancy business that partners with companies, innovators and investors to build, manage and utilize IP portfolios. Before QipWorks Johanna spent 12 years at BlackBerry, originally designing radios as a cellular wireless engineer and later participating and then leading a global radio standards team active among others, in 3GPP and the IEEE. She worked closely with licensing teams developing processes for identifying, evaluating, managing, validating, and monetizing investments in intellectual property.
Johanna and her QipWorks team provide extensive expertise in IP strategy and patent portfolio development and management as well as litigation support and standardization advice. Johanna realized that many small and medium-sized businesses yet do not treat patents as their core assets. Such assets must be explainable and have a purpose for the business. QipWorks helps with developing patent portfolios and here in particular for companies that conduct research and development close to the development of standards such as 4G/5G or Wi-Fi technologies.
Johanna was part of the team that developed the BlackBerry patent portfolio that was just in January 2022 sold for $600M to Catapult IP Innovations Inc.. The BlackBerry patent portfolio includes many SEPs for standards such as 2G, 3G, 4G, 5G, Wi-Fi, AVC/HEVC/VVC and others.
Patents that read on a standard are of high value as SEPs can be used to join or create SEP licensing programs or as bargaining chips in FRAND cross-licensing negotiations. In any case, owning SEPs ensures the owner a seat at the table when the next generation of connectivity is developed. But filing patents that later become standard-essential is a challenging process. R&D teams, IP patent boards, and prosecution teams must closely work together. Here claims must be compared to the current standard versions early on, which is challenging as standards evolve and claims change in the prosecution process before they are granted. Johanna and her team make sure that such patents are not only essential but also valid and enforceable. Johanna says: “With SEPs a near miss is worthless. If your patent claims miss the final standard you may as well abandon those patents as they have no value”. Standards development and being able to contribute to technology is much more time and budget-consuming as many people think. An engineer that goes to standards meetings must prepare for the meeting, must be active at meetings but also be able to take the learnings from the meetings to again prepare the next one. That is a full-time job with the focus on submitting high-quality standard contributions that others agree and accept in the process. That engineer has no time to sit with patent attorneys. At Research in Motion (Blackberry) Johanna explains, they had so-called standards coaches whose job it was to “own” the patent in the prosecution process, aligning patent filing and standard development strategy. All that is very labor-intensive, and experts need to know both the technology and at the same time must have knowledge of the patent prosecution process.
But owning SEPs is just the beginning, one must also have the right strategy in place to sell, license, or further develop SEP portfolios in the market. Johanna believes that such a process can only be installed in companies that realize that patents are core assets and that patents must have value for the shareholder. Patent strategy therefore should be introduced and play a core role for board room decisions.