The companies implement a patent invalidity search to validate or invalidate the competitor’s claim of a specific patent. This is one of the most vital steps taken by the inventor when he/she is confronted with a suit for patent infringement. People also conduct this search to help in examining the patent strength while discovering potential opportunities for potential licensing.
The patent invalidity searching process is a comprehensive prior art search that users conduct following patent insurance. This search’s primary goal is to identify any prior art that an examiner of USPTO might have missed, and thus will invalidate the issued patent. It is different from the regular search for prior art. The invention or an innovative idea is not the main point of the search. Instead, it concentrates on the claim of the language they have used. The patent invalidity process’s primary purpose is to keep digging deep inside a domain to recognize important prior art. This search can result in challenging a patent of another person or assist with defense against the patent infringement’s allegation.
How To Perform This Search?
Before beginning a patent invalidity search, always establish the patent’s priority date in question. Generally, any public disclosure that is present before filling the patent date acts as prior art. If anyone publishes the patent application later after filling the patent date to invalidate, then the published application of the patent will also act as prior art.
The owner can analyze the patent claim properly to emphasize the first patent filing date to disclose all the claim limitations to invalidate a patent. The patent application might disclose the bulk features, but some features are revealed in the patent that needs to be invalidated. These classes or limitations are known as the components of the patent claim in question. You can prove the priority date of the claim to be a dispute. In other words, it is essential to consider the patent filing date while conducting an invalidation search.
How To Invalidate An Already Issued Patent? Besides the prior art references of the prosecution history
To have a significant patent invalidation process, it is essential to include a good understanding of the patent and for what prior art searches are you seeking. Before enforcing any action, try to get a quick overall view of the patent and understand its disclosure situation of the prior art. Determining the patent’s scope and the claim will offer you an unobstructed view and direction for the prior art searching. Below are some of the popular approaches for patent invalidation.
1. Locating The Prior Art
The references for the prosecution’s prior art history, family prior art, and the second-degree prior art are some of the perfect places to locate a strong prior art. Family Prior art shows the disclosed part of the patent family. The inventor will use any family prior to art as evidence for invalidation, particularly the abandoned family members’ citation. If anyone abandons any of the patent family members, then the inventor can use this citation as a proof for invalidation search.
Another important segment to look for second-degree references of the patent is second-degree art. Once you have thoroughly searched for the first level backward citations, it is now time to move to the next level. Second-degree art is mainly present in the below circumstances.
- Forward citation of the Backward Citation
- Backward citation of the backward citation
- Forward citation of the backward citation
2. Review The Information Of The File Wrapper
Examining a file wrapper’s data allows the inventor of a patent to know more about the rejections of the claim made by the examiner of the patent, the recorded history, and after grand proceedings in the prior art prosecutions and the rejection grounds. It is important to know that the owner has disclosed how much of the patent after comparing the target claims and the prior art.
If anyone can find the prior art for the claim’s disclosure, then this shows that the patent is exceptionally weak. The invalidation of the changes in the patent claim will also remain high. Some patents are so challenging that it does not disclose itself by the reference of a single prior art. However, you might require proving it with much prior art as evidence. With restricted time, it even becomes more challenging to carry out a comprehensive patent validity search.
3. Proof That The Patent Was Available For Public Use Or On Sale
Suppose you can prove that an invention was on sale or publicly available in the USA market within one year before the date of the provisional patent application. In that case, it will invalidate the patent. You can also prove a patent claim as invalidate through the patent abroad documents, detailed publication, or already recognized by the USA’s inventors.
Importance of Patent Invalidity Searches
You will require performing patent invalidity searches because of the following reasons.
• The date of target priority, if different from the priority date listed on the patent
• The specific claim and the patent number used for invalidation
• Any known name of the prior art that the patent face does not include
When To Implement A Patent Validity Search?
The user can implement a patent validity search in situations like:
• Before the enforcement of your patent to determine the risk of invalidity
• When you have received an infringement allegation by the patent owner
• For the pre-issuance submissions, IPR, and proceedings of the post Grant review under the America Invents Act
Thus if you have received a suit for patent infringement or prior art is present somewhere, then you have done a thorough patent validation/Invalidation search to prove your point. This search will help the investor establish the authenticity of the invention.