Patent Validity Search Services/Patent Invalidity Search Services
Patent Invalidity search is an exhaustive prior art search conducted after patent issuance. Primary objective of undertaking a validity/ invalidity search is to find patent and non-patent documents that might impact the claims included in a particular target patent. Typically, in a patent litigation matter where a rival accuses an entity of violating their patent, a standard defence is demonstrate to the Hon. Court that the suit/target Patent itself is invalidate and incorrectly issued by the Patent Office, for which exercise, a patent invalidity search is carried out to test how strong the target patent is and if it can be challenged. A patent invalidity / validity search is also usually conducted to assess a patent’s strength, and determine how well it can fend off validity challenges. Thus, as a matter of fact, it can be said that the primary purpose of invalidity/ validity search is to validate enforceability of a patent’s claims.
Advantages of Patent Invalidity Search
Invalidity search is primarily undertaken while commercializing a patent. Before getting into high stake lawsuits, patent owners go for a validity search to confirm enforceability of their legal right. An in-depth study for validation or invalidation of a patent can change the dynamics of a lawsuit, drastically changing the verdict entirely. Patent validity or invalidity search can be conducted to analyse and estimate vigour of a patent for licensing, acquisition, or merger process. In a situation where the defendant wins, the patent claim of the plaintiff will be held invalid, barring him from stopping others from using, selling, or making the controversial technology.
Negative outcome of the search will mean that the patent consists of claims that hold novelty, have inventive steps, can be used by the industry, and, finally, does not fall under any statutory exception patents.
Invalidity Search is ordered by interested parties and can have various end objectives, including but not limited to:
- To refrain from patent litigation or defend a patent litigation by challenging validity of the suit patent
- To avoid heavy licensing fees
- To open roads for blocked product
- To locate other similar buying options for their patent/ product portfolio
- Evaluate strength of a patent before investing resources/money into it
Types of Patent Invalidity Search
Depending on the turnaround time and end objective of clients, IIPRD offers customizable Invalidity Search options:
1. Knock Out Search – (Patent Invalidity & Validity Search)
A Knock-out search is a quick and economical 16-24 hours search performed by experts to validate the novelty and/or inventiveness of one or more features claimed in the target patent. This quick search is designed to support Attorney and In-House Counsel to strengthen IPR petitions by identifying and adding solid prior art references against weak links in the IPR petition. The motive behind this search is to save or reduce costs and time in assessing the patentability of inventions. We are dedicated to providing a thorough and scrutinized knock-out search for the interest and advantage of the client. This confirmatory search plays a decisive role in whether to invest in the drafting and filing of a patent.
At IIPRD, Technical Subject Matter Experts (TSME) work closely with analysts skilled in carrying out highly focused patent and non-patent literature searches within a technology space. The research aims to uncover all such documents that disclose, teach, motivate or suggest the use of the target feature/ claimed feature/ claim(s) in the technology space of the target patent.
A copy of identified prior art reference(s) along with highlighted sections that attack novelty/ inventiveness of claim/ claimed feature under question usually serve the intended purpose.
2. Invalidity Search
At IIPRD, we offer a detailed invalidity search to eliminate a target patent’s independent claim(s). A comprehensive in-validity search is primarily preferred by applicants/ investors or interested parties to confirm/ reconfirm validity of claims under question before undertaking any lawsuit or while evaluating if they can take invalidity defence in an ongoing litigation or commercial transaction related to the patent.
At IIPRD, Technical Subject Matter Experts evaluate patented technology (suit patent) and its prosecution history to understand the reason for allowance and therefore the scope of protection. Our search team is well equipped with the industry’s state of the art patent and non-patent literature databases & holds hands-on experience in regional patent office databases. With the help of our language translators and offshore collaborations across China, Japan, and Korea, we provide native language search options at minimal cost to uncover regional NPLs that do not usually surface in English language searches.
As a part of the final output, a detailed search report contains an understanding of patented technology and search strings/classifications used to search prior art references. These strategies are formulated and claim charts with respect to identified prior art references are prepared/shared. Our color-coded claim charts present a feature-wise analysis of recognized prior arts mapped with the target patent, along with the searcher’s comment(s) against each mapped claim element to help understand the searcher’s thought process and inferences used to establish facts within the claim charts. A detailed search report containing feature-wise analysis of potential threats to a patent can help clients decide on the fate of the patent in question.
- Scope of Search
- Differentiating Validity and Invalidity Search
- Steps to perform an Invalidity/Validity Search
Section I- Scope of Search– In a validity search, the focus is on the claims and not the description of the patent specification per se, unless of-course a claim term requires interpretation or scope of the claim is to be evaluated. While the search is primarily undertaken with respect to the asserted independent claims, dependent claims are also sometimes focused on based on client requirement and the number of claims that have been asserted for infringement by the Plaintiff.
Section II- Differentiating Validity and Invalidity Search– A search for invalidation is conducted for a party being sued (Defendant). By invalidating the patent that is the subject of a patent litigation, the Defendant tries to avoid paying damages and/or suffer from an injunction. However, in some scenarios, in order to evaluate the strength of their patent(s), the Patentee/Assignee conducts a patent validity search themselves to determine whether their portfolio is robust or the possibility that the patent will be held valid during enforcement proceedings if/when a lawsuit is brought.
Section III- Steps to perform an Invalidity/Validity Search– The foremost step is to assign a team specializing in the subject matter of the target patent, which would accurately review the patent to define the scope thereof in view of the prosecution history/estoppel along with evaluating the claims to be searched for. The process of understanding a target patent requires thorough knowledge and in-depth insight into the domain of the invention, based on which a search strategy including keywords, strings having combination of keywords and sections of the patent applications where the keywords would be searched for, key non-patent databases, product literature databases, and classifications can be devised/identified. Such search strategy can thereafter be executed considering the priority date of the target patent so as to identify prior art references that disclose key elements owing to which the patent was issued by the patent office.
After mapping of identified and relevant prior art references wrt elements of the target patent, a report is generated and shared with the client in a desired format. This report not only includes the closest-identified citations but also the closest related citations to the target patent. IIPRD has a team of over 240 professionals across different territories including search professionals in China, Japan, and Korea that can collectively help conduct deep and thorough validity searches to identify the closest existing references.
3. Nullity Search
Nullity search is an exhaustive search offered by IIPRD to invalidate an entire claim set, or a specific embodiment/ set of patent claims to avoid an upcoming or undergoing patent litigation lawsuit. A nullity search is done parallelly with a patent infringement proceeding to challenge the claims or rights in a patent, for which an infringement suit has been filed in a Civil Court. The rationales behind conducting this search include lack of patentability and insufficient disclosure of the scope of the invention.
Nullity Search is a client-driven search wherein we align a team of technical subject matter expert(s) with the client. The TSMEs not only perform an extensive search to try and invalidate the claim set, but also actively help attorneys design the best claim interpretation in an easy-to-understand manner while simultaneously protecting the scope of protection. During the course of the campaign, IIPRD professionals are available 24×7 to assist Patent Attorneys and Litigators with additional search and/or in preparing formal documents, technical disclosures, and mapping sheets, along with helping in depositions, preparing document requests, preparing requests for admission, interrogatories, among other like activities thus providing support at every stage during the entire campaign.
Our Approach – (Validity / Invalidity Search for Patent)
We at IIPRD understand the criticality and importance of patents from a commercialization standpoint and undertake numerous Patent Validity projects to ensure enforceability of concerned patents to the best of our capabilities. We conduct an extensive search of patents, technical publications, and/or any other available written material that may be relevant to the patented invention. We seek to carefully scope the search parameters to focus on the most relevant sources. We are passionate about our work and aim to empower the most innovative and advanced entities via our solutions. Our focus is always aligned with our clients. We aspire to assist our clients in tackling their unsolvable technology-driven problems by providing insightful strategies for the particular implementation. IIPRD has a proven history for catering the Global Clients for Patent Analytics Services in USA, Patent Analytics Services in Japan, Patent Analytics Services in Europe, Patent Analytics Services in Middle East, amongst many others.
Our Services – (Validity / Invalidity Search For Patent)
We at IIPRD specialize in various kinds of searches, including patentability search, invalidation search, freedom-to-operate search, landscape search / landscape study / whitespace search, state of art search, infringement search, etc. We also specialize in managing patent portfolios, analyzing patent rankings, technology landscapes, market research, etc. We, along with our experienced executive team, are committed to delivering best results for the searches requested by the clients.