Invalidity Search – A powerful tool

With the advent of Industrial Revolution 4.0, market players in emerging economies and across the globe are competing to get the lion’s share in the technological landscape. It is, therefore, inevitable that such contention will lead to loss of one and gain for another. Invalidity search is the premier tool to either increase one’s advantage such as gaining a technological or strategic edge over a competitor or to defend against a patent infringement allegation. Major companies have dealt with patent disputes in the past by proving the invalidity or validity of patents in patent infringement lawsuits and presently these patent wars are on the rise as a result of continuous innovation and dynamic market requirements. A thorough invalidation study can, however, help drastically in your cause.

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.

What is Invalidity Search?

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. In this aspect, 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 targeted at the claims of the patent in question.

Need for invalidity search

Typically, it is imperative for one to question the point of an invalidity search assuming that an issued patent would have been thoroughly scrutinized and that all relevant prior art would have been covered already. However, with large chunks of prior art which may be significantly older than the time at which the patent in question had been filed or prior art that was only available in a foreign language, there are chances that some relevant prior art might have been missed. This may be because some prior art had previously been missed by the examining authorities due to non-availability during the scrutiny. This acts as an opportunity to validate or invalidate a patent. Thus, with the advancement of technology and consequent availability of old literature or literature available in foreign languages, modern-day databases have made searching easier and you can find prior art to validate/invalidate a patent.

Get an invalidity search done

With successful invalidations delivered to clients from different backgrounds including inventors, law firms, manufacturers and organizations across various domains, Signicent – Technology, IP & Market Research spares no effort in searching for relevant prior art through systematic and detailed invalidation study. Our structured and extensive searching includes:

• – Thorough invention understanding

  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.

• – Inclusive Searching

  After having understood the invention and analyzing 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: Paid and Open source patent databases, Scientific Literature (NPL) & Research Article Search, e-commerce websites, product databases, videos, blogs, news etc.

• – Second degree art searches

  To uncover relevant prior art that an examiner had previously missed, a searcher is expected to dig deeper and we do that by also unraveling through exhaustive citations analysis. Backward & forward citations of backward citations of the patent in question are analyzed, as well as the backward citations of the forward citations. As per case, a further level of analysis might also be carried out.

• – Supplementary Search

  Our reports are further augmented by meticulous search for relevant competitors, assignees, inventors and similar patents. Besides, our searches include multi-lingual search queries for coverage of foreign language patents as well.

• – Interim Reports

  Our reports are client-centric and the relevant records are provided on rolling basis, with updates from time to time as per client convenience. This ensures timely action if a relevant record found can be used for expedited office actions.

• – Detailed Mapping

  We provide claim charting with color coded (or non-coded, as per client requirement) mapping of claims of patent in question with the relevant prior art. The report is accompanied by corresponding PDF’s of the relevant prior-arts wherein all the key features found are highlighted for the ease of client’s review.

Overall, Signicent possesses Technology, IP & Market research expertise, navigate to our home page for more details.