Patent Invalidity Search & Validity Search

Patent Invalidity search is an exhaustive prior art search conducted after the patent issuance. The primary objective of achieving a Validity/ invalidity search is to find patent and non-patent documents that might impact the claims included in a particular patent. The best option available if a rival accuses a client of violating a patent is to show that their patent is invalid through this kind of search. A patent invalidity/ validity search is also 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 the invalidity/ validity search is to validate the enforceability of a patent’s claims.

Patent Invalidity Search & Validity Search
Patent Invalidity Search & Validity 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 the 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. The patent validity or invalidity search can be conducted to analyze and estimate the vigor 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.

 

The 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.

(In)-Validity Search is ordered by interested parties and can have various end objectives, including but not limited to:

  • To refrain from patent litigation
  • To avoid heavy licensing fees
  • To open roads for blocked product
  • To locate other similar buying options for their patent/ product portfolio
  • Evaluate the strength of a patent before investing resources/money into it.

Depending on the turnaround time and end objective of clients, IIPRD offers customizable (in)-validity Search options:

1. Knock Out Search – (Patent Invalidity & Validity Search)

A Knock-out search is a quick and economical 16-24 hour 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 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 along with highlighted sections that attack novelty/ inventiveness of claim/ claimed feature under question serves the purpose.

2. Invalidity Search

At IIPRD, we offer a detailed invalidity search to eliminate a target patent’s independent claim(s). A clear in-validity search is primarily preferred by applicants/ investors or interested parties to confirm/ reconfirm the validity of claims under question before undertaking any lawsuit or commercial transaction related to the patent.

At IIPRD, a Technical Subject Matter Expert evaluates patented technology and its prosecution history to understand the reason for allowance and scope of protection. Our search team is well equipped with the industry’s best 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, 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 data used to search prior art references. These strategies were formulated and claim charts of identified prior art references. Our color-coded claim charts present a feature-wise analysis of recognized prior art because of the target patent and the searcher’s comment 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 a feature-wise analysis of potential threats to your patent helps you decide 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– A patent’s claims are always the focus of validation or invalidation searches, with little attention paid to the description’s subject matter or various embodiments. The claims are, however, understood about the subject matter. The client might order an invalidation search on numerous claims rejected due to infringement arguments.

Section II- Differentiating Validity and Invalidity SearchA search for invalidation is conducted for a party being sued (defendant). By invalidating the patent that is the subject of the litigation, the defendant tries to avoid paying damages. However, the patent owner or assignee will conduct the validity search themselves to determine whether their portfolio is robust or the possibility that the patent will be valid enough so that it won’t be later declared invalid if a lawsuit is brought.

Section III- Steps to perform an invalidity/ validity Search- The foremost step is to assign a team specializing in research. We have a team having a forte in the study and conducting invalidity/ validity searches. The next task is to understand the patent; the claims to be searched for may differ depending on the client’s requirement. Ergo the process of understanding requires thorough knowledge and in-depth insight into the subject. Once the patent is understood, it becomes crucial to determine its earliest filing or priority date. Eventually, prior arts are searched by the analysts, and finally, the validity or invalidity of the patent is analyzed.

After the mapping, a report is generated and supplied to the client in the PDF format. This report includes not only the best-identified citations but also the closest related citation to the invention. We provide a team of vast and diverse expertise in various technological facets that can easily understand the invention to validate or invalidate them.

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 technical subject matter expert with the client. The TSME not only performs an extensive search to invalidate the claim set but also actively helps the Attorneys design the best claim interpretation in an easy-to-understand way 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.

We offer Nullity search without any internal deadline. We mark these projects as close and bill our clients only when the campaign is settled from their end.

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 the enforceability of the concerned patents to the best of our capabilities. We conduct an extensive search of patents, technical publications, and/or any other available written materials 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.

Our Services – ( Validity / Invalidity Search for Patent )

We at IIPRD specialize in various kinds of searches, including patentability, invalidation, freedom-to-operate, landscape, state-of-art, infringement, etc. We also specialize in patent portfolios, patent rankings, technology landscapes, market research, etc. We, along with our experienced executive team, are committed to delivering the best results for the searches requested by the clients.

In addition, we have experts from the US, UK, Japan, China, and Middle-East with vast IP knowledge. We believe in applying intelligence to IP globally. We adopt the most beneficial, invasive ways for the clients; that is how the clients here are earned and not bought.