An organization or an entity conducts an invalidity search to validate a patent’s claim or invalidate the claims of the patent of a competitor. It is one of the initial steps that businesses’ entities take when they are confronted with a suite of patent infringement. Organizations also conduct patent invalidity searches to assist with the investigating strength of any patent when they are exploring potential licensing opportunities.
We can consider that the process patent invalidity search is an extensive search of prior art which business entities conduct after issuing a patent. The main objective behind the patent invalidation search is to find out the location of any prior art that the examiner of USPTO has missed while invalidating any patent.
Contradictory to the invalidity search, patent validity search is the kind of search that organizations and businesses perform with assignees’ help after the attorney ensures grant of the patent valid and enforceable. However, both the investigations have the same objective, and that is to unearth a prior art that would question the novelty of the reference. Attorneys perform prior art searches thoroughly in several databases that are subscribed and provide relevant authorities and need invalidation soon. The aim of our company Sagacious IP Research are-
- To make an accurate knowledge of technology claims of patents and the coverage of claims
- Defining the novel aspect of the patents based on specifications and file history
- Validating the prior arts under several regional laws that are specific.
How Is A Patent Invalidity Search Different From That Of A Regular Search?
A patent invalidity search is different from that of a regular search as the main idea behind the invention or idea is not the search point. Moreover, a patent invalidity search concentrates on the claim language that the concerned business owner or organization uses. When we keep this in mind, we must also evaluate the essentiality of any prior litigation and post-grant that are associated with the claim construction along with the history of prosecution. This helps in ensuring the body searching the elements of the claim are searching them in association with their possible scope and interpretation.
Thus, we can say that the whole purpose of a patent invalidation search is to find out deep into the domain to find out the significance of the prior art that the examiner of the patent had missed previously. The process of a patent invalidity search can facilitate a challenge for someone else’s patents or can also help with the preparation of defense against the allegation of patent infringement.
How To Perform Patent Invalidity Searches?
Generally, we can see that organizations conduct patent invalidation searches to identify any other patent or any other published prior arts, which can render a patent invalid. An organization or entity can request a patent invalidity search only if a company wishes to hamper other organizations’ growth in the same business or domain. In the process of a patent invalidation search, the examiner tries to validate the enforceability of the granted patents’ claims. The companies set claims for the targeted patent claims if the independent patent claim can be rendered invalid that the valid claims are also not enforceable.
The attorneys who are conducting patent invalidation search serve their clients with some report, which is of patent invalidation to the in-house counsels of technology companies. These technology companies support foreign patent attorneys in countries like the USA, Israel, Europe, Japan, China, Brazil, South Africa, Australia, and South Korea.
Before we begin with the patent invalidity search, the first step should be to establish the date of priority in which the patent claims are in question. Any disclosures that are available in public before the date of filing of the patent prior arts. Additionally, if any published patent application is dated after the date of filing, but the filing date is before the date on which the patent in question was published, then the published application of the patent is classified into the category of the prior art.
To invalidate a patent effectively, there are several common approaches which we can take up:-
- Reviewing The Information Of File Wrapper: This will help us discover much important information about the claim rejections which the examiner made. It gives information about the grounds of rejection, the recorded prior art in the history of prosecution, and also the post-grand proceedings. If you can find the claims to the prior art very easily on the search, it indicates the patent is weak and can be invalidated very quickly.
- Locating The Prior Art: It is essential to find out the references of the prosecution history, patent family prior art, or the second-degree prior art, which would be great at places for discovering the strong prior art. With the help of family prior art, there are disclosed previous art of the patent family. Attorneys use any kind of family-related prior art as evidence of invalidation, especially the citations of the family’s abandoned members.
- Proving That The Invention Was On Sale Or Made Available For The Use Of The Public: Suppose attorneys of organizations find that an invention is on sale within twelve months before the date of filing the patent application, or it is patented abroad or being detailed in the form of a publication or recognized by any inventors. In that case, they can render the patent invalid.
From the above, we can conclude that the patent invalidation search is not easy and requires proper guidance for completion. We have some professional attorneys carry out every step of the patent invalidation search minutely and with a lot of diligence to help our clients as per their requirements. Trust and security are aspects that every client desires from their attorneys and our company is worth complete trust that safeguards your data.