How a SEP Essentiality Analysis Changed a Multi-Million Dollar Licensing Negotiation

The Client's Situation

When the founders first came to us, they had something they believed in deeply: a novel approach to digital payment without disclosing the credentials of payee and secure mechanism for smooth settlement of the payment. They were a small, technically excellent team with limited runway, preparing to raise their first significant round. Their investors would want to know one thing above all — was this innovation genuinely theirs, and could it be protected?

They asked us for a patentability analysis. What they wanted, understandably, was confirmation. What they needed was the truth.

Chapter One: The Answer Nobody Wanted

Our team began where every honest patentability assessment begins — not with a database, but with the invention. We sat with the founders to understand precisely which features made their approach different, then searched the way an examiner would: granted patents, published applications, and — crucially — non-patent literature across IEEE, ACM, ScienceDirect and academic repositories.

It was in that last category that we found it. A published research paper, from a university lab, describing an approach strikingly close to the core of their idea. Not a distant relative. A close one.

We could have softened it. We didn't. We showed the founders the reference, walked them through it line by line against their own claims, and explained exactly where it hurt and where it did not.

"The room went quiet. Months of work, a fundraise ahead, and a piece of prior art nobody had seen coming. The founders asked the question we hear often in that moment: is the idea dead? This is the point where most patentability engagements end. It is where ours began."

Chapter Two: Working Around, Not Walking Away

A prior art reference tells you where you cannot go. Read properly, it also tells you where you can.

We convened a joint brainstorming session — our technical experts alongside the client's engineers — and put the reference under a microscope. What exactly had the paper disclosed? What had it not disclosed? Where were its assumptions, its limitations, the problems it had left unsolved?

Out of that session came a workaround: a design modification that stepped clear of the prior art's disclosure while preserving — and in one respect improving — the commercial function the founders cared about. It was not a compromise. It was a better invention, arrived at because the prior art had forced a harder question.

We drafted the patent application around that reframed invention, building the claims to sit squarely in the space the reference had left open, and prepared the specification with the prosecution road ahead in mind. The application was filed in Europe via the client's appointed European patent attorney.

The outcome, twice over: the client had a filed application on a defensible invention. And when they walked into their funding conversations, they walked in with an asset. The round closed on terms materially more favourable than they had expected.

Chapter Three: From One Patent to a Strategy

A year later, they came back — but with a different kind of question. They were no longer asking can we protect this idea? They were asking where should we innovate next?

They commissioned a patent landscape study of the digital payments domain. Our analysts mapped the field: who was filing, in which sub-technologies, in which jurisdictions, and how quickly. We traced filing trajectories over time, clustered the space by technical taxonomy, and — most importantly — looked for the gaps. Where was the innovation dense and defended? Where was it thin?

The study surfaced clear white spaces. From those gaps, we proposed four specific, patentable directions the client could pursue.

What happened next is the part we're proudest of. Handed a clear map of their own field, the client's own engineers generated ten further inventions — ideas that emerged not from us, but from a team that could finally see where the open ground lay. The landscape had done what a good landscape should: it turned R&D from guesswork into navigation.

Chapter Four: Building the Portfolio

Over the following two years, we drafted fifteen further patent applications for the client — the four we had proposed, the ten they had generated, and one original. Each was drafted by technical specialists who by then understood the client's technology as well as their own, with claims scoped to the white space the landscape had identified and to the product the company was actually building.

The portfolio was not a collection. It was a structure — layered around a core invention, extending into adjacent white space, and aligned market by market with where the client intended to sell.

The Outcome

Recently, the company was acquired by a major player in the financial services sector. The acquirer's diligence focused, as these things do, on what the company truly owned — and found a coherent, technically substantive, well-drafted portfolio covering the core of the product and the ground around it. The client's digital payments product launched across Europe under the acquirer's brand.