Validity / Invalidity Search for Patent

Introduction

Invalidity search is an exhaustive prior art search conducted after the issuance of patent. The main purpose of the invalidity search is to validate the enforceability of a patent’s claims.

Invalidity search is primarily undertaken while commercializing a patent. Before getting into high stake lawsuits, patent owners go for validity search to confirm enforceability of their legal right. On the other hand, (In)-Validity Search is ordered by interested parties can have various end objectives including but not limited:

  • To refrain from patent litigation
  • To avoid heavy licensing fees
  • To open road 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.

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

1. Knock Out Search

Knock-out search is a quick 16-24 hour search performed by experts to validate novelty and/or inventiveness of one or more features claimed in the target patent. This quick search is designed to support Attorney’s and In-House Counsel to strengthen IPR petitions by identifying and adding strong references against weak links in the IPR petition.

At IIPRD, Technical Subject Matter Experts (TSME) work closely with Analysts who are skilled in carrying out highly focused patent and non-patent literature search within a technology space. The research aims to uncover all such documents that disclose, teach, motivate or suggest use of target feature/ claimed feature/ claim(s) in the technology space of 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. In-(validity) Search

At IIPRD, we offer detailed (in)-validity search to eliminate independent claim(s) of a target patent. A detailed (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 patent.

At IIPRD, a Technical Subject Matter Expert evaluates patented technology and its prosecution history to understand the reason of allowance and scope of protection. Our search team is well equipped with industry’s best patent and non-patent literature databases & hold hands-on experience on 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 NPL’s that do not usually surface in English language searches.

As a part of final output , a detailed search report contains understanding of patented technology, data used to search prior art references, strategies that were formulated and claim charts of identified prior art references. Our color coded claim charts present feature-wise analysis of identified prior art in view of target patent and searcher’s comment against each mapped claim element help to understand searcher’s thought process and inferences that were used to establish facts within claim charts. A detailed search report containing feature-wise analysis of potential threats to your patent helps you decide the fate of patent in question.

3. Nullity Search

Nullity search is an exhaustive search offered by IIPRD to invalidate entire claim set or a specific embodiment/ set of claims of the patent to avoid an upcoming or undergoing patent litigation lawsuit. Nullity Search is client driven search wherein we align a technical subject matter expert with the client. The TSME not only perform extensive search to invalidate the claim set but also actively help Attorney’s in designing best claim interpretation in an easy-to-understand ways and at the same time protecting the scope of protection. During the course of campaign, IIPRD professionals are available 24*7 to  assist Patent Attorneys and Litigators with additional search and/or in preparing formal documents, technical disclosures, mapping sheets, along with helping in depositions, preparing document requests, preparing requests for admission, interrogatories, among other like activities thus providing support at each and every stage during entire campaign.

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

Our Approach

We at IIPRD understand the criticality and importance of patents from a commercialization standpoint and undertake numerous Patent Validity projects to ensure, to the best of our capabilities, enforceability of the concerned patents. 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 in order to focus on the most pertinent sources.