Licensing or Litigating a Standard Essential Patent: A Practitioner's Guide to Declarations, FRAND Rate Setting, and Injunction Limits
By Casey Scott McKay ·
This guide runs a standard essential patent matter from the declaration decisions that create the position through the licence or the judgment that ends it. It sets out declaration hygiene and transfer covenants for holders, then the essentiality sampling study that both sides should run before any rate is discussed. It works the construction of an opening offer and of a counteroffer, including the willingness statement that forecloses a hold-out characterisation. It then covers rate evidence in detail - comparable licence adjustment, cross-licence valuation, top-down cross-checks, royalty base selection, and the apportionment methodology that survives an admissibility challenge. It closes with remedy strategy, forum choice, anti-suit dynamics, and arbitration.
IP and Technology > Patent Litigation | Guide | Published 14 March 2025 - Updated 30 May 2026 | Casey Scott McKay - marksy.us
Summary. This guide runs a standard essential patent matter from the declaration decisions that create the position through the licence or the judgment that ends it. It sets out declaration hygiene and transfer covenants for holders, then the essentiality sampling study that both sides should run before any rate is discussed. It works the construction of an opening offer and of a counteroffer, including the willingness statement that forecloses a hold-out characterisation. It then covers rate evidence in detail — comparable licence adjustment, cross-licence valuation, top-down cross-checks, royalty base selection, and the apportionment methodology that survives an admissibility challenge. It closes with remedy strategy, forum choice, anti-suit dynamics, and arbitration.
Keywords: SEP licensing programme · declaration hygiene · essentiality sampling · claim charts · opening offer construction · counteroffer practice · willingness statements · comparable licence analysis · cross licence valuation · top-down cross-check · royalty base selection · apportionment methodology · expert admissibility · injunction strategy · ITC exclusion orders · anti-suit injunctions · arbitration of rate disputes · non-discrimination evidence · portfolio transfer covenants · negotiation record
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