As a Founder and Managing Director, Bikram plays a key role in the day to day operations and formulating strategies for smooth execution of research assignments. Bikram is also responsible for client acquisition and client engagements in Asia pacific region. Bikram helps global technology companies monetize their IP assets through automated tools and helps them generate more value out of their IP. He has the expertise of assisting clients on a wide range of technologies such as Semiconductors (circuits and processes), Wireless Technologies, Memory Devices, Cloud Computing, and Consumer Electronics.
Bikram has been advising several Global 500 clients in effective patent portfolio optimization and competitive benchmarking analysis to help them understand their position in the industry. Bikram has extensive experience in assisting clients on high stake US, Japanese and Chinese patent litigation cases. Recently, Bikram has been actively involved in advising clients on new product development strategies and technology Landscape studies.
What is a patent invalidity search?
Also called an opposition search, the objective of a patent invalidity search is to identify patent and non-patent documents that may impact the claims that are present in a specific patent. When a competitor attacks you with patent infringement claims, your best resort is to prove the patent invalid. A patent validity/invalidity search is also done to calculate the strength of a patent to see how much it can guard itself against claims of validity.
Using the results from this search, you can block patents and validate the claims of a patent portfolio which can be useful during a licensing or a company acquisition process. An invalidity search is conducted by a defendant to invalidate a patent by conducting a prior art search.
A patent invalidity search is performed for three important reasons:
- To check whether someone holds an authentic claim to the patent
- To invalidate claims of patent infringement
- To search for patents before any new patent enforcement
How do you perform a patent invalidity search?
The first step towards performing a patent invalidity search is to establish the priority date of the patent claims. Disclosures that are publicly available before the date of the filing of the patent are considered to be prior art. Also, if a patent application has been published by you after the patent’s filing date, it will receive a prior art rank.
You might not always get enough material to stab at your patent’s novelty, but a patent validity search will give you an idea as to where to look for if there is an anomaly. Below are the steps that you should take while performing a patent invalidity search.
- Understand the subject:
You need to know the technical and patent issues so that you can fully interpret the claim during the validity search. Since validity searches are usually performed on patents that have already been allowed, you need to have a broad sense of the claims to find further relevant art. Read in detail about the prosecution history at the beginning of the search, including the file wrapper to interpret the claim which needs to be invalidated.
- Do not leave out even a small detail:
To conduct an invalidity search successfully, you need to pore through innumerable patents and literature documents. A thorough examination will include an evaluation of the specification text, figures, chemical formulas, tables, etc. The searcher should focus on a variety of matters that will be of relevance to cover most grounds if not all.
- Conduct a broad search:
When thorough invalidity searches are conducted, the findings will help you make the right business decisions. Missing prior art could cost you millions in patent infringement suits or having to re-work the product. You need to gather all your resources and search to the broadest extent possible. Start with works such as patent office search reports, history of the prosecution, opposition proceedings, litigation proceedings, etc.
- Do not ignore non-English literature:
Even though the volume of non-English literature is not much, you should not neglect or underestimate its importance during your searches.
- Know when to halt the search:
The problem with invalidity searches is that there is so much information to gather and so many places to seek them from. What happens if you don’t know when to stop? You will end up extinguishing your resources and burn a lot of money, not to forget the amount of time you will end up wasting. Your search strategies should also mention clearly when exactly you will stop so that it doesn’t go on for a long time.
- Do reporting properly:
The final report should be submitted in an easy-to-understand manner. While it is tempting to cite all the resources, all these references might not be relevant to the client. Offer a brief interpretation of the results and add any other supporting information if necessary. Report the findings in a matter-of-fact manner instead of offering opinions as they can be used against your client.
The final report for the search should include relevant prior arts, key features, search strategy, keywords, classes, key assignees, key inventors, and claim charts that map relevant prior arts with the features of claims. A detailed report will help you understand the validity or invalidity of the claims in the patent.
Factors involved in a patent invalidity search
It is different from a prior art search because of a few factors that are involved in a patent invalidity search. Let us look at them.
File wrapper information:
The file wrapper, or the dossier content, provides the most updated information regarding a patent application’s progress. It includes information on the examination process, search reports, office actions, correspondence with the patent office, and so on. When you read the file wrapper, it will give you an idea about the aspects on which the patent has been granted or if there is any novelty feature for the patent. The searcher will be able to identify if a claim has not been identified by the examiner.
A file wrapper will also tell you about the kind of search strategy that was utilized by the examiner. Based on this, the searcher can find references to invalidate the claims of the patent.
Cited references:
Both patent and non-patent literature that have been cited for the targeted patent are called cited references. You can gather the cited references from the file wrapper. When the analyst goes through the cited references, they can see the ones that have already been used against the targeted parent. By doing this, it becomes easy to get an idea of the missing part to invalidate the claims of the targeted patent.
Date Restriction:
To find out prior arts and prior right cases, Date Restriction plays a big part in the invalidity search. A prior art case is published before the priority date of the patent that is to be invalidated. Prior right cases are those that are published after the priority date of the targeted patent, even though their priority date is before that of the targeted patent.
Conclusion:
With all that said, the first thing you need to do before conducting a patent invalidity search is to consider the patent’s filing date. With a patent invalidity search, you might be able to find prior art that the previous examiner might have missed out on. If a business is challenging the patent of a competitor or is preparing for a defense against an infringement charge, then the ideal retort is this.
If you want to find out the validity of a patent, reach out to Researchwire, our expert analysts will be more than happy to take care of it. Our in-house experts understand the patent laws for different countries and are adept at conducting an expert search.
