Invalidity Search
A patent invalidity search is generally utilized for validating a patent (in which case one is the defendant and has to defend against a possible patent infringement lawsuit to prove his claims as valid) or to invalidate the claims of a competitor’s patent (also called the plaintiff). Besides the aims of validity or invalidity, invalidity searches may be used to estimate the strength of a patent for licensing, acquisition or merger purposes. If the defendant succeeds, the plaintiff’s patent can be considered invalid and cannot stop others from selling or manufacturing the technology in dispute.
Why Invalidity Search is Important?
A patent invalidity search (or validity search) is a focused prior art search for any type of article, data, publication, product, patent or non-patent literature made available to the public prior to the effective filing date (or priority date depending on the case requirements) of the patent in question.
The primary objective of an invalidation search is to identify any patent or non-patent document that affects claims of the subject patent and subsequently enable you to challenge the novelty aspect and the obviousness (or inventive step, i.e. finding if a claimed invention is obvious to a person having ordinary skill in the art) of the patent in question. An invalidation search becomes similar to other prior art searches and especially Patentability or Novelty Search, however, it is distinguished in its scope for narrowness and aim for finding relevant prior art aimed at the claims of the patent in question.
Our well organised and extensive searching methodology includes:
We develop thorough invention understanding and make sure to include any prior litigation and post-grant associated claim construction, besides studying the prosecution history, to ascertain that the particular claim elements are searched keeping in mind their scope and possible interpretations. A thorough analysis of global dossier and/or file wrapper is our port of call after invention understanding.
Post understanding the invention and analysing file wrappers, we make appropriate keyword, classification, combined searches of keywords & classes and logical searches with search strings made from all-inclusive approaches of the invention to uncover any prior art across all sources such as but not limited to: Professional (paid) and Open-source patent databases, Scientific Literature (NPL) & Research Article Search, e-commerce websites, product databases, videos, blogs, news etc.
To uncover relevant prior art that an examiner had previously missed, a searcher is expected to dig deeper and we do that by also unravelling through exhaustive citations analysis. Backward & forward citations of backward citations of the patent in question are analysed, as well as the backward citations of the forward citations. As per case, a further level of analysis might also be carried out.
We provide claim charting with colour coded (or non-coded, as per client requirement) mapping of claims of patent in question with the relevant prior art.
