Unveiling the Patent Game: Validity or Invalidity Search Holds the Key to Success
A patent invalidity search, also known as an opposition search, seeks to find patent and non-patent materials that may have an impact on the claims included in a certain patent. When a competitor hits you with patent infringement charges, your best option is to prove the patent invalid. We also perform a patent validity or invalidity search to assess a patent's strength and its ability to withstand validity claims. This type of search can help identify prior art that was not considered during the patent application process, potentially leading to the patent being invalidated. It is a crucial step in defending against allegations of patent infringement.
Using the results of this search, you may block patents and validate claims in a patent portfolio, which can be valuable throughout the licensing or acquisition process. A defendant conducts an invalidity search to invalidate a patent by searching the prior art.
There are three primary reasons to conduct a patent invalidity search:
• Before enforcing new ones, verify patent claims, invalidate infringement claims, and search for patents.
How do you carry out a patent invalidity search?
The first step in conducting a patent invalidity search is to determine the priority date for the patent claims. Prior art refers to disclosures that were publicly available prior to the patent's filing date. Additionally, publishing a patent application after the patent's filing date will classify it as previous art.
You may not always have enough evidence to test your patent's novelty, but a patent validity search will help you figure out where to seek if there is an abnormality. When conducting a patent invalidity search, you should follow these steps:
• Understand the subject: To fully grasp the claim throughout the validity search, identify technical and patent concerns. Typically, validity searches on already-granted patents require a thorough understanding of the claims to identify further relevant art.Start the search by thoroughly reviewing the prosecution history, including the file wrapper, to identify the claim that requires invalidation.
• Conduct a thorough invalidity search, including reviewing numerous patents and literature sources. A complete review will involve an assessment of the specification text, graphics, chemical formulas, tables, and so on. The searcher should focus on a variety of topics that will cover most, if not all, of the bases.
• Conduct a comprehensive invalidity search: Missing previous art could cost you millions of dollars in patent infringement lawsuits or require you to rework the product. You must gather all your resources and do the broadest search possible. Begin by reviewing patent office search reports, prosecution histories, opposition processes, litigation procedures, and so on.
• Don't forget non-English literature. Non-English literature is important to consider while conducting searches, despite its small amount.
• Know when to stop searching; invalidity searches can be overwhelming due to the abundance of information available. What happens if you're not sure when to stop? You will end up exhausting your resources and spending a lot of money, not to mention wasting a lot of time. Your search tactics should also specify when you will stop, so that it does not go on for too long.
• Ensure proper reporting: Submit the final report in an understandable format. While it is tempting to cite all the resources, they may not be relevant to the client. Provide a brief analysis of the results, as well as any additional supporting material as needed. It is important to present the findings as facts, not opinions, to prevent potential misuse by your client.
The final search report should include important prior arts, key features, search strategy, keywords, classes, key assignees, key inventors, and claim charts that map relevant prior arts to claim features. A detailed report will assist you in determining if the patent's claims are legitimate or invalid.
In several ways, patent invalidity searches differ from prior art searches. Let's look at them.
The file wrapper, also known as the dossier content, contains up-to-date information on the status of a patent application. It comprises details about the examination procedure, search reports, office activities, correspondence with the patent office, and so forth. Upon reading the file wrapper, you will gain insight into the reasons behind the patent's award and discover whether it incorporates any innovative features. The searcher will be able to determine whether or not the examiner has identified a claim.
You can also learn about the examiner's search strategy from a file wrapper. This allows the searcher to find references that invalidate the patent's claims.
The cited references encompass both patent and non-patent material associated with the targeted patent. You can find the cited references in the file wrapper. When the analyst examines the cited references, they can see which ones have already been utilized against the targeted patent. This facilitates the identification of the missing portion required to invalidate the claims of the relevant patent.
During invalidity searches, date restriction is critical for identifying prior arts and right instances. Publication of a prior art case occurs before the patent's priority date, leading to its invalidation. Despite having an earlier priority date, prior right cases publish after the targeted patent's priority date.
To conduct a patent invalidity search, start by considering the filing date. With a patent invalidity search, you may be able to discover prior art that the previous examiner missed. If a company is contesting a competitor's patent or planning to defend against an infringement allegation, this is the ideal response.
What is the difference between invalidity and validity searches?
"Invalidity" and "Validity Search" are essentially synonymous. Both searches uncover relevant prior-art documents that are sufficient to invalidate the target patent's claims. Specifically, the invalidity search looks for prior-art documents that invalidate the target patent's claims, whereas the validity search determines if the target patent's assertions are enforceable.
For instance, a business might conduct an invalidity search if it faces a patent infringement lawsuit. Alternatively, a company may want to "validate" its own patent by certifying that others cannot uncover invalidating previous art, say, before filing an infringement complaint against a third party.
Whether you refer to it as a "invalidity" or "validity" search is a matter of personal preference; however, it is advisable to use the same term as the client. The identical search method applies in both circumstances, but the client's objectives are different. In the first instance, the client is very interested in finding references, but he may be privately hoping that you do not discover any relevant prior art in the second case.
The result of the search
Ideally, no amount of prior art can "prove" the validity of a patent and its issuance. There is always the possibility of finding a prior art document that you did not find during your diligent search. On the other side, an extensive prior art search might help patent attorneys argue that a patent is defective and thus unenforceable. That's why most lawyers prefer the phrase "invalidity search" for prior-art searches.
An efficient searcher will use all available resources, including digging through hoards of non-patent literature, to identify essential prior art that the patent examiner may have ignored during the patent's prosecution and award. Such prior art would enable the client to challenge another's patent ("invalidity") or prepare them to defend their own patent against a competitor ("validity").
If you want to find out whether a patent is valid, contact our expert analysts, who will gladly assist you. Einfolge's in-house experts are well-versed in patent rules from many nations and cando expert searches effectively. They have access to various databases and tools to conduct thorough searches and provide comprehensive reports on patent validity and invalidity. With their expertise, you can make informed decisions regarding patent challenges or defenses.