What is Invalidity/Validity Searches? How do these searches help in cases of defense?
We at Singhwal perform Invalidity/Validity Searches in cases where our clients need to defend their case with respect to infringement, licensing or any other scenario. We also conduct Validity Searches which help clients during Merger and Acquisitions, licensing or valuation.
We have several hours of experience in Invalidity/Validity Searches in different subject domains such as mechanical, chemical, electrical, electronics, telecommunication, civil, metallurgy, computer science, IT, Software, Aeronautical, etc.
What is an Invalidity Search?
Patent Invalidation search deals with thorough analysis of all reference documents prior to the filing of the granted patent. The process involves identifying relevant prior art documents to invalidate the granted Patent. Patent Invalidation is generally used as a defensive tool in most cases, when a company is concerned about infringement of a particular patent. There are several scenarios for which a defense is sought out for.
In some cases if a patent infringer is being threatened in any form, the infringer may opt for invalidation in order to overcome the damages imposed on the infringer. In another case, a patent owner may refuse to license the patent for several reasons, and a third party seeking the license may aim to invalidate the patent in order to utilize the invention. There are several scenarios that lead to the need of an Invalidation Search.
Through an invalidity patent search we attempt to uncover issued patents or other published prior art that may cause a patent to be partially or completely invalid. The patent invalidation search is conducted to limit the scope of the patent in question and may cause a granted patent to be invalid. We also use a strict timeline in invalidity searches as prior art documents that are dated before the filing date of the patent in question are searched.
How is an Invalidity Search Report formulated?
In general, the patent invalidity search starts with understanding the technology described & claimed in the patent and reviews the patent prosecution history. In addition, the searcher has to read and understand the prior arts cited in the granted patent to thoroughly understand the technology or invention. This practice helps to formulate the key words and patent classification. It should be noted that as the time progress in the search process, the searcher will come up with different key words and its combination. Because, reading more literature brings clear insight into the technology in order to formulate highly relevant keywords.
Reviewing the prosecution history plays a vital role in the patent invalidity study. For example, the examiner objected the invention/ claim on the basis of anticipation in view of a prior art which generally disclose the invention. The applicant argued that the claimed invention is a selection invention over the generic disclosure and associated with superior result. This information helps us to conduct the invalidity search to find out the prior art describing the superior result of the claimed invention. In some cases, it is required to carry out the prior art experiments in order to establish that the prior art process or product results in the current invention. Specifically, the prior art process must be carried out as per the instruction given over there and if the process inevitably produces the claimed invention then it is not novel.
Relying on the prior art(s) cited by the applicant and examiner and the related discussion during the prosecution of the patent application for invalidity strategy carry less weightage as compared to rely on the new prior art(s). However, if the invalidity search expert or attorney can figure out new invalidity argument in view of the prior arts already considered then those arguments can have more weightage.
Most invalidation reports consist of a claim mapping chart which is a comprehensive techno-legal analysis of mapping one or more claims of the patent to a particular product feature, or a technical description or a scientific technical document. Our claim mapping involves the process of assessing each and every independent claim, and mapping the elements of the independent claim to the prior art documents.
Once the independent claims are thoroughly mapped, we also move towards mapping some of the relevant dependent claims and in some specialized cases, and we also map the whole patent which includes the diagrams and description. Non-patent literature which may include journals, or technical documents are also analyzed to assess the presence of any relevant prior art documents.
We strategize our searches and reports based on the reason for invalidation of patent. Each invalidation case is processed using the most applicable strategy and a patent may be invalidated based on several aspects.
Some of the grounds of invalidation may include:
- Inconsistency of content within the patent document
- Claiming for subject matter that is present in the prior art
- Getting a grant for an invention that does not satisfy all the eligibility criteria
- Presence of false information in the patent
- Claims do not completely describe the invention
- There is absence of complete disclosure of the invention
Conducting the invalidity search in different languages is necessary in order to retrieve all the relevant prior arts. In some cases, patents and scientific literatures, relevant to specific technology, are published only in one country such as Japan, China, Russia etc. Therefore, the invalidity search must include the strategy to retrieve the relevant potential prior arts available in all languages across globe thereby fulfil the purpose of the search. Once the relevant prior art is identified in foreign language, it is highly important to translate the prior art accurately into English or local language. Because, if the document is not translated properly the scope of the prior art would be changed which will heavily affects the invalidation argument.
Invalidity search vs. Prior art search:
Though there are similarities exist between invalidity search and prior art search, there are nuances between them. In case of prior art search, one can start to search the prior art documents which are available as on the priority date/cut off date. However, the patent invalidity search involves first to understand the technology described in the patent thoroughly. Once the technology is understood then the prosecution history of the patent must be reviewed so as to determine the exact scope of the claim. This is because, during the examination of patent application the transaction happened between the examiner and the applicant clearly defines the scope of the prior art(s) and inventive aspect of the invention. Therefore, the prosecution history enables the invalidity searcher to understand the scope/ limitation of the claim thereby complete/ clear invalidity search can be conducted.
What is a Validity Search?
A Patent Validity Search is conducted for several reasons.
In some cases such as a Merger or Acquisition, or Licensing of a Patent portfolio, a Patent Validity Search is conducted in order to understand the strength and validity of the patent or portfolio. A Validity Search may also be conducted in cases of IP Due Diligence. When a company may be interested in acquiring another company, and the patents form a part of the main assets of the company, a Patent Validity Search is conducted to evaluate the patents of the company, and in turn the overall valuation of the company.
The process that we follow for our Patent search projects involves a searching team of 3 to 4 people discussing each case in detail, to strategic a plan of action for the search. The search is then conducted on both paid and unpaid sources to get the closest matching prior art document. We then review and analyze the results to categorize the relevance and then provide a detailed report This report is then assessed by our analysts to check for the quality and relevance and a viable conclusion is presented in the report.
When to conduct an invalidity/ validity search
As a patentee/ assignee, one can commission the invalidity/ validity analysis well before starting the litigation. Because, this analysis helps the patentee to decide whether to serve the complaint notice to the infringer or desist the notice. Hence, the invalidity/ validity analysis helps the patentee to strategize the litigation process which generally involves high cost. Additionally, based on the result of the analysis the patentee can do through preparation for better settlement with the infringer before or after the litigation is commenced as the case may be.
In some cases, the practising company has to initiate the invalidity/ validity search at the time of initial infringement threat from the patent owner. Because, the defensive approach/ strategy helps the infringing company to defend the litigation at the early stage itself. Alternatively, the practising company may proactively conduct the search before potential threat from the patent owner in order to defend the case.
At the time of licensing/ monetization of the patent, the invalidity/ validity search helps the patentee to bargain the best possible deal or monetary benefit. Having the complete patent landscape and/ or prior art in the relevant technology the patentee can clearly address a particular prior art carried by the potential licensor or defendant. This helps the patentee to show that the patent is valid which ultimately brings more value to the license/ agreements.
For potential investor, the search provides detailed information about the validity of the patent. Hence, the validity/ invalidity search conducted before any potential acquisition or merger helps the investor in terms of time and resource. Also, if the company has strong patent portfolio and the value of the company is also based on their patent portfolio then the patent validity study is an use full tool to calculate the value of the company. The calculated value helps to bargain with the potential investor.
The search is conducted if the patentee has a plan to request for re-examination of the granted patent thereby strengthening the validity of the patent. Based on the invalidity/ validity search, the patentee provide the closest prior art references, which are not considered during the original examination, to the patent examiner during the re-examination and hence the prior art will be considered by the examiner against the claimed invention. This kind of prior search and re-examination is highly beneficial to the patentee because the infringer/ third party may come up with the same closest prior art and challenge the validity of the patent in the court thereby the increasing the expenditure for patent litigation and create an uncertainty about the validity of the patent by the third party.
The search experts and patent attorneys at Singhwal have rich experience in patent validity/ invalidity search and analysis. Our technology and patent experts work hand in hand with our clients in order to conduct comprehensive and complete patent invalidity/validity study. In addition to providing the search report, we also advice our client the way forward. We strategically advice our clients, as the case may be, to conduct the search at appropriate time, to initiate or drop a lawsuit against the infringer, during the acquisition & merger and licensing the patent and patent valuation process. Our experts have vast experience in conducting searches in multilingual and using multiple debases including both freely available and paid databases. Also, our experts conduct a comprehensive search including prosecution history and other type of invalidity/ validity search. We also provide support our client in case any additional searches in required after the generation of report in order to strongly support the client’s strategy. We provide cost effective and high quality search report.