What is Invalidity/Validity Searches? How do these searches help in cases of defense?
We at Patracode 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?
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
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. We have performed numerous Invalidity/Validity Searches incorporating the relevant strategy required by our client.
