A patent invalidity search is a targeted search for prior art, which includes any published data, including patents, non-patent literature, data, or publications, that are accessible to the public prior to the patent’s effective filing date or priority date that can demonstrate the lack of novelty and obviousness/inventive step. The basic goal of the search is to either verify the legitimacy of its enforcement (validity check) or to challenge its claims (invalidity check). This search is also commonly performed to evaluate the strength of a patent and determine how well it can withstand validity challenges.
Invalidation can be pursued in various proceedings within the domain of intellectual property, such as Patent Trial and Appeal Board (PTAB) proceedings, Inter Partes Review (IPR), International Trade Commission (ITC) cases, Covered Business Method (CBM) reviews, and Post-Grant Review (PGR) processes.
The primary goal of a Patent Invalidity or Patent Invalidation search is to uncover any relevant prior art that may have been missed by the examiner and could potentially demonstrate the patent’s invalidity, ultimately killing the patent.
Three important reasons why a patent invalidity search is conducted are:
Invalidity or Patent invalidation search can also be considered as the extension of the prior art search as this search focuses on the language as well as comprehensive concept and idea.
A Patent Invalidation search helps you uncover relevant prior art to challenge the validity of a patent. It serves as a defensive strategy when a client is worried about potentially infringing a particular patent, especially in response to a competitor’s infringement lawsuit.
The patent invalidation search is performed to limit the scope of the patent in question and may result in the invalidation of a previously granted patent. Patent invalidation search assists clients, when they need to defend their case against infringement and licensing.
Expertise in utilizing several patent and non-patent databases efficiently.
Various search concepts are utilized to contribute to the development of an effective search strategy for identifying relevant prior art.
Effective search strategy includes:
Finding Insights in File Wrapper – Evaluating references cited in the file wrapper of the subject patent (as well as their family members), cross-checking their relevancy and why they couldn’t invalidate the latest claims and extracting insights for executing the first step.
Digging classes deeply – We not only extract classes of the subject patent, but also dig deep into the domain to find the narrowest possible class that could be used to target the features. For that we use cited results, their family citations, other close results as well as Espacenet/Google Patents.
Multi-side of Interpretations – Before kick-starting the search, we brainstorm with our expert team regarding multi-directional possibilities of the key features and their interpretations.
Identifying segments in the prior art that explain why a reference is relevant.
Self-explanatory invalidation search report with full prior art analysis, web links to examine the complete specification, pictorial representation, complete bibliographic data of the references, and legal status.
A patent validity search is performed to determine if a patent is valid and can hold against invalidation by checking the novelty and non-obviousness of the invention claimed over prior art that is available. The search is intended to validate that the patent is legally valid and enforceable.
Conversely, a patent invalidity search is conducted to locate prior art that would invalidate a granted patent. It is most often utilized to discover vulnerabilities in a patent, frequently for litigation or opposition purposes, by searching for prior patents, publications, or other references that may attack the validity of the patent.
In conclusion, a validity search tries to confirm the strength of a patent, while an invalidity search tries to find possible grounds for its invalidity.
Turnaround time for a patent invalidity search varies with the complexity of the project, specific client requirements, and other issues involved in the search. Ordinarily, it takes 5 to 10 business days. But if you’re in a hurry, our professionals are dedicated to executing results within the planned timeframe without sacrificing quality.
Our invalidation search report contains an exhaustive list of the prior art references encountered, a detailed assessment of their relevance, and an opinion on the potential validity of the patent. The report also describes the methodology employed, explains any specific terms or constraints of the search, and mentions any applicable caveats, across different types of prior art.
The price of a patent invalidation search differs based on the complexity of the search, the amount of references to be searched, and the scope of the project. To provide an accurate patent invalidation search quote, it’s always best to speak with our subject matter experts.
