Evaluating the validity of a patent is crucial for businesses, patent owners and their intellectual property (IP) strategies, as it directly influences the patent’s enforceability and the extent of its protection.
Depending on the need, a patent validity or invalidity search is conducted, and there are two sides to this coin.
Conducting thorough assessments of patent validity can help owners identify and address any vulnerabilities in their patents. By establishing the validity of their intellectual property rights (IPRs), patent owners can boost their IP portfolios — enhance their position in licensing negotiations, deter competitors, and ultimately protect their inventions.
On the other hand, proving the asserted patent’s invalidity can serve as a powerful defense strategy for businesses facing patent infringement claims, potentially saving them from costly litigation and safeguarding their own innovations.
In this guide, we’ll cover the basics of a patent validity or invalidity search, and why this type of prior art search is an important part of any IP strategy.
A patent validity or patent invalidity search is conducted to identify prior art that may disclose, and potentially challenge the novel and inventive features claimed by a patent.
Also called a patent invalidation or opposition search, the goal of this search is to find prior art that was not considered during the patent examination process. This type of prior art search is conducted for various reasons, from patent litigation as defense against patent infringement claims to assessing the strength of a patent.
The primary reason for conducting a patent invalidation or patent invalidity search is to challenge the validity of a patent, or specifically one or more of its claims. Apart from proving non-infringement, taking an invalidity position is one of the defenses one could take in a patent infringement case. In the United States, federal courts have the power to decide on the validity and enforceability of a patent.
For this top US patent litigation firm, Parola Analytics’ patent validity search expertise led to finding key prior art.
For this top US patent litigation firm, Parola Analytics’ patent validity search expertise led to finding key prior art.
An alternative to federal court litigation is to challenge the validity of the patent through post-grant proceedings at the USPTO Patent Trial and Appeals Board (PTAB). A party accused in a patent infringement case can gather prior art as evidence, build a case and petition a review. The PTAB has various patent invalidation mechanisms such as the inter partes review and post grant review.
An ITC (International Trade Commission) Section 337 investigation is a legal proceeding conducted by the United States International Trade Commission under Section 337 of the Tariff Act of 1930. Section 337 prohibits unfair practices in import trade, such as intellectual property rights infringement or unfair competition by imported goods.
The purpose of a Section 337 investigation is to address unfair acts in the importation of products that harm domestic industries. These unfair acts can include:
While these investigations seek to address various forms of unfair competition, majority of complaints involve patent infringement.
An entity named as respondent in a Section 337 investigation may prove non-infringement, cite exempted uses, or challenge the validity of the asserted patent. While the ITC works independently of the USPTO, it may take into consideration various sources of evidence, including PTAB rulings. However, there are still significant improvements needed in how these two independent bodies decide on patent infringement and validity.
When a patent holder chooses to enforce their patent, they may conduct a patent stress test in the form of a patent validity search. This aims to assess a patent’s strength and identify potential weaknesses before engaging in patent litigation.
This enables patent holders to anticipate and prepare for potential challenges that could be raised during legal proceedings.
Before buying a patent, the acquiring party must assess the validity and enforceability of the patent in question.
Licensing a patent without thoroughly evaluating its validity can expose the licensee to legal risks. If the patent is later found to be invalid, the licensee may face financial damages, and potential disruption to their operations.
A patent validity search helps identify any potential risks and allows the licensee to make informed decisions before entering into the licensing agreement. This is particularly important in licensing Standard Essential Patents (SEPs), as it is possible that not all declared SEPs are valid.
A patent invalidity or validity search must be conducted during due diligence activities in mergers and acquisitions. By identifying any potential invalidity issues, the acquiring company can make informed decisions regarding the value of the target company.
A prior art search, specifically a patent invalidity search is not a straightforward task and requires a lot of optimization before you get relevant results. Here are some helpful tips to get you started.
1. Analyze the patent claims and set the scope
Before starting a patent invalidity search, the subject matter must be understood by each individual involved in the search.
The scope of the search is very important. Identifying the “effective filing date” of the asserted patent or its claims will set the parameters of your search.
2. Plan out a search strategy.
Plan out a strategy for conducting a text search, patent classification (CPC) search, and a patent citation search.
If the technology described in the patent has broad applications, list out all possible industries, technology areas, jurisdictions relevant to the invention.
3. Identify the inventive step
Determining the inventive step or “inventive concept” allows you to prepare a good set of keywords for your search.
5. Make use of publicly available databases
Individual prior art researchers may not typically have access to commercial databases. Several public online databases cover various topics and subject matter.
For patent literature here are some helpful patent databases:
For non-patent literature (NPL), some of the databases are
There are also patent search tools that use AI to enhance your prior art or patent invalidity search. One such tool is PQAI, an initiative by AT&T. Try the AI-powered patent search tool for free.
5. Map the patent claims to the your references
Once you have a list of references deemed relevant, it helps to visualize how your results stack up against the claims. Patent invalidity search reports include a claims mapping chart, where each element of a claim is mapped against the features disclosed in a prior art reference.
Visualizing the results helps assess how “strong” or “weak” a reference is by showing how many elements are met by the reference or how strongly are the elements matched.
6. Get a team of patent research experts
While anyone can conduct a patent validity or invalidity search, it is a complex and time-consuming process. Depending on the complexity of the subject matter, it oftentimes becomes imperative to seek the help of a team of subject matter experts, researchers, and patent professionals.
Engaging patent research providers can become a cost-effective tool, especially when you have decided to go to court or petition a review before the PTAB and challenge the asserted patent.
A thorough, well-informed search can also help mitigate costs attributed to litigation, infringement, licensing.
Parola Analytics specializes in U.S.-registered patent attorney-led prior art searches. An approach to prior art search which combines both legal and technical fronts can ensure relevant, high-quality results.
Find out if Parola Analytics is a good fit for you.
Parola provided us the key reference
The first search Parola Analytics, Inc. performed for us provided the key reference supporting our invalidity position on a patent we were evaluating.
The work product is top notch!
Vincent Violago and his excellent team at Parola Analytics provide high quality, detailed, prior art search results with minimal oversight and handholding. These guys are highly educated and experienced in their field and work together with great efficiency. The work product is top-notch, and they are always available for follow up, including detailed discussions of the report and additional pinpoint searches based on the results.
Demonstrated deeper understanding of the search
I engaged Parola Analytics to conduct a prior art search on a difficult US patent that had already stymied another search firm that delivered two unusable references. Parola found four much better references in two weeks that demonstrated a deeper understanding of the search and an effective selection of the best references.
Responsive and easy to work with
Parola Analytics is our trusted partner for prior art search contests on PATROLL, Unified Patent’s crowdsourcing platform. With their expertise in prior art searching, Vincent and his team at Parola Analytics are valuable partners in reviewing prior art submissions to our contests. Parola Analytics provides broad knowledge across various subject-matters and offers competitive pricing. They are easy to work with and are responsive to our needs.
Parola delivered outstanding results!
Vincent and his team at Parola are excellent at locating prior art. We have worked with Parola on two matters, and both times, Parola delivered outstanding results. Parola’s highly-relevant search results and reports demonstrated a thorough understanding of the patent claims.
High Quality. Efficient. Reliable.
The team at Parola Analytics did an excellent job in providing us with the highest-quality prior art research service. The team’s search report highlighted the best prior art references with an easy-to-understand format. In short, the team proved itself.
For individuals or organizations facing patent infringement suits, finding “killer prior art” that challenges the validity of the patent claims can be a first line of defense against costly patent litigation.
The USPTO provides several mechanisms for patent validity challenges through PTAB post-grant proceedings such as inter partes review, post grant review, among others. These patent invalidation proceedings take less time and are less costly than court litigation.
As a team focused on developing customized patent search strategies, we partner with you to help you move forward as you develop, commercialize and protect your innovations.
For this top US patent litigation firm, Parola Analytics’ patent validity search expertise led to finding key prior art.
Parola provided us the key reference
The first search Parola Analytics, Inc. performed for us provided the key reference supporting our invalidity position on a patent we were evaluating.
The work product is top notch!
Vincent Violago and his excellent team at Parola Analytics provide high quality, detailed, prior art search results with minimal oversight and handholding. These guys are highly educated and experienced in their field and work together with great efficiency. The work product is top-notch, and they are always available for follow up, including detailed discussions of the report and additional pinpoint searches based on the results.
Demonstrated deeper understanding of the search
I engaged Parola Analytics to conduct a prior art search on a difficult US patent that had already stymied another search firm that delivered two unusable references. Parola found four much better references in two weeks that demonstrated a deeper understanding of the search and an effective selection of the best references.
Responsive and easy to work with
Parola Analytics is our trusted partner for prior art search contests on PATROLL, Unified Patent’s crowdsourcing platform. With their expertise in prior art searching, Vincent and his team at Parola Analytics are valuable partners in reviewing prior art submissions to our contests. Parola Analytics provides broad knowledge across various subject-matters and offers competitive pricing. They are easy to work with and are responsive to our needs.
Parola delivered outstanding results!
Vincent and his team at Parola are excellent at locating prior art. We have worked with Parola on two matters, and both times, Parola delivered outstanding results. Parola’s highly-relevant search results and reports demonstrated a thorough understanding of the patent claims.
High Quality. Efficient. Reliable.
The team at Parola Analytics did an excellent job in providing us with the highest-quality prior art research service. The team’s search report highlighted the best prior art references with an easy-to-understand format. In short, the team proved itself.
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+25 hours with a patent expert
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+ 40 hours with a patent expert
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Effective patent validity or invalidity searches start with a good understanding of the subject matter.
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Disclaimer:
1. Parola Analytics and Avontis are distinct entities and operate independently. Any references to Avontis or its services do not constitute a legal partnership.
2. Parola Analytics does not provide legal services. Our services are limited to research and technical analysis. Any information provided by Parola Analytics should not be construed as legal advice.
