The SEP Couch: Eli Mazour and the Art of SEP Claim Drafting

In the latest episode of The SEP Couch, Tim Pohlmann interviews Eli Mazour, a partner with Harrity & Harrity LLP and host of the Clause 8 podcast.

With experience working alongside Qualcomm and other innovation leaders, Mazour navigates the difficulties inherent in standard essential patents and explores how companies on either side strive for change. He underscores the need to comprehend technology beyond merely perusing patents and standards.

Mazour’s discussion with The SEP Couch sheds light on the significance of technologies, notably 5G, in fuelling innovation and transformation. Multiple other innovations stem from 5G technology, which has served as a foundational technology for the past two decades. The conversation also underscores the importance of standard essential patents and the necessity for valuable patents that cover future implementations and align with industry standards.

Mazour acknowledges the complexities and challenges of understanding and drafting patent claims. Even with an understanding of the invention, one might struggle to express it as the inventors do. The discussion dispels the misconception that merely obtaining a patent guarantees financial success, emphasizing instead the importance of accurately drafting claims.

The podcast delves into the process of accumulating information from clients and the additional data required to draft a claim. It points to the value of collaborative input and the extensive information necessary for drafting a valid claim. Pohlmann and Mazour discuss the surprise that can arise while prosecuting applications and the hurdles of conducting an exhaustive search.

Inventors often experience frustration when they discover their invention has already been patented. Thus, it is crucial to conduct a prior art search and ensure comprehensive coverage of a patent application. Mazour and Pohlmann also stress the role of engineers in comprehending the standard and belief in the potential of an invention; the importance of providing ample details and adhering to a standard when filing a patent application; the necessity to ensure that the inventor is credited for the complete idea, not merely a fraction of it; the importance of accurately defining the legal rights in the application and aligning them with the standard; having open communication with the inventor; and keeping a close eye on how the standard evolves.

Finally, Pohlmann and Mazour explain the importance of maintaining open lines of communication with engineers to obtain high-quality patents. This highlights the complex nature of technology and the need to rely on knowledgeable experts.

Key Responses

How do you know when a patent is essential?

Mazour: “One of the main indicators is the request from inventors, who are all extremely well-qualified, experienced professionals, to declare their invention as essential for the industry.”

What is the process of getting an SEP or drafting the essentiality claim like?

Mazour: “Eventually, whatever patent you get, you want it to cover the final standard in the market. So, when we receive invention disclosure forms from our engineers, our aim is to not only draft an application that covers the existing standards in the market but also include descriptions and claims that ensure that are aimed at addressing future changes to the standards in our technology.”

During this process…is there regular communication between you and the inventor/engineer?

Mazour: “Different companies and outside counsels do things differently. But in my experience, it’s always best to have a high level of communication with the inventor, simply because the technology is getting increasingly complicated, and we require their expertise in making critical decisions.”

More Highlights

Listen to the entire episode to get answers to the following questions:

1. What are the complexities and difficulties associated with understanding and drafting patent claims, particularly for standard essential patents (SEPs)?
2. How does Mazour help large technology companies build valuable, high-quality SEP portfolios efficiently? What strategies and best practices does he implement?
3. What is the role of technologies, particularly 5G, in driving innovation and transformation? What is the significance of standard essential patents in this context?
4. What is the importance of conducting a prior art search when filing a patent application? How does this process help ensure that a patent application covers all eventualities?
5. What is the need for close communication with inventors and engineers when drafting patents? Why is this important in obtaining high-quality patents?