How to Perform Patent Invalidity Search ⋆ Tech Attorneys

A patent searcher with expertise in patent invalidation performs a professional patent search for inventions covered under the scope of patent claims of the granted patent that is to be invalidated.

Generally, a patent invalidity search is conducted to identify patents or other published prior arts that may render a granted patent invalid and one or more documents has been missed by the patent examiner during the prosecution of the patent application before the patent office.

How to perform patent invalidity search?

As it is well known, a Patent Validity Search or Patent Invalidity Search is a detailed prior art search conducted after a patent is issued and granted by the patent office. The Invalidity Search patent service is requested only if a company or an entity desires to stop their competitors in same domain.

Patent Invalidation Process | Patent Validity Searching

The main purpose of the invalidation search is either to validate the enforceability of the granted patent claims or to invalidate one or more claims of a patent, respectively. Generally, the independent patent claim set is targeted. If the independent patent claim set is invalid then automatically the dependent patent claims are not enforceable.

Patent Invalidity Search Report Vs Patent Validity Search Report

Patent Validity Search or Patent Invalidity Search are similar except for the end results i.e. valid or invalid patent claims, of the search. Although, each claim of a patent is presumed to be valid when granted, it is possible that the patent office may have allowed claims in error by missing the most relevant prior art during patent prosecution process. In use, the invalidity search conducted for the granted patent in question to uncover better prior art results by a professional patent searcher than the prior art of examined record uncovered by the patent examiner at the patent prosecution stage.

Patent Validity Analysis By Patent Attorney | Patent Invalidity Report

The result of an invalidity search is to identify prior art available and published before the earliest priority date of the patented technology in question. The goal of the professional patent researcher is to find patent specifications that read on the claims of the patented technology in question. Our team consists of experienced professional patent researchers for conducting invalidity searches and patent validity searches in all technology domains. Till date, we have conducted over 200+ invalidity searches and generated highly effective patent invalidation report for United States, and other foreign clients.

Patent Invalidation Report

The patent attorneys provide patent invalidation report to in-house counsels of technology companies and support foreign patent attorneys in countries like USA, Europe, Israel, Japan, China, Australia, Brazil, South Africa and S. Korea.

Patent Infringement Analysis

Generally, while conducting patent infringement analysis, relevant prior art (patent or non-patent literature) is identified that reveals intersection of patent claims with third party patent claims. In such a situation, a patent invalidity analysis has to be performed by the experienced patent attorney. The invalidity patent search and patent invalidity analysis seeks to determine whether the respective Patent Office granted the patent with intersecting patent protection in view of the existing prior art which includes inventions or non-patent literature / journal publication.

In simple words, the patent invalidity analysis is helpful to determine whether the Patent Office granted the patent owner IP protection over a technology aspect which was not new and was well-known in the public domain before the earliest priority date of the patent in question.

Invalidity Patent Search | Patent Analysis Strategy

The patent invalidity analysis of the identified granted patent requires further patent searching of the prior art to determine whether the granted claimed features in the patent are not novel in view of that prior art. The patent invalidity search analysis includes identifying prior art patent specifications and/or non-patent journal publications before the first filing date of filing the said granted patent before the patent office. For example, if a provisional patent application was filed for the granted patent on 01.01.2014, then in this case we have to identify any published prior art for the same technology (prior art patent specifications and/or non-patent journal publications) before 01.01.2014.

On the other hand, a patent clearance search / right to use patent search (freedom to operate search) is used to determine whether a technology or a product is likely to infringe any third party patent. The freedom to operate patent search and analysis includes identifying prior art granted patents which are legally enforceable. The above mentioned patent search steps conducted by the patent attorney can assist clients in determining whether there is a patent risk associated with the launch of the product in particular jurisdiction, for example, “sale of a product or service within the United States”.

Patent Basics

To understand the basics of patent process, it is important to understand that how ideas are developed into patents. For example, by using the Davison Inventing Method, idea are developed initially because the product design is likely to go through changes during the development phase. Henceforth, a broad protection is ensured by filing provisional patent application, which is further strengthened by filing a non-provisional patent application with a strong set of patent claims. Subsequently, a patent is a grant by the Patent Office of the right to stop others from making, using or selling an invention in a particular jurisdiction for a limited period of time.

Patent Litigation Avoidance

It is common for patent owners to develop strategies to avoid patent litigation, which is executed by implementing multiple research and analysis based processed, such as, for example, but not limited to, Freedom to Operate Searches and Opinions for identifying patents that may result in potential infringement issues; Non-Infringement Opinions to determine if a product infringes a competitor’s patent; Patent Invalidity Searches & Opinions to determine relevant prior art to invalidate a competitor’s patent; “Patent Fence” Strategies Against Competitors to draft and file patents for potential improvements to competitors’ products to prevent them from improving their technology, and the like.

Patent Prosecution in India

We handle patent prosecution in India by facilitating the interaction between inventors, patent applicants and Indian patent office, which usually includes highly complex technical and legal issues. Our team has significant experience in handling the entire patent process in India and we possess strong understanding of the relevant procedures and the potential pitfalls.

We have successfully advised our clients to obtain patent protection in India and across international jurisdictions (US, Europe, UK, Singapore, Malaysia) for a wide scale of technologies, and our patent attorneys possess years of experience in patent research, patent prior art searches, patentability analysis, patent analytics, patent application drafting, patent claim drafting, patent prosecution, , licensing, and other intellectual property-related issues.

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Advocate Rahul Dev is a Patent Attorney & International Business Lawyerpracticing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyeron Twitter

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Patent attorney Rahul Dev works with clients providing expert legal services in the field of innovative pharmaceutical products, branded drugs, generic drugs, molecular biology, immunology, cell biology, regenerative medicine including ESCs, iPSCs, pSCs, diagnostics, therapeutics, theranostics, drug delivery systems, host-vector systems, high throughput screening, bioinformatics, diagnostic imaging, ancillary services (PET, CT, MRI, ultrasound, greenlight, lithotripsy, radiation therapy, cyber-knife, nuclear camera, clinical lab, pathology, physical therapy and dispensing prescriptions).

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