Patent validity or invalidity searches can be valuable tools in various stages of the IP lifecycle.
Learn more about the process, the various use cases, and why a validity or invalidity search should form part of your IP strategy in this comprehensive guide.
What is a Patent Validity or Invalidity Search: Your Complete Guide
Patent validity or invalidity searches can be a valuable line of defense against patent infringement lawsuits and a powerful tool in navigating the various ins and outs of intellectual property strategy.
Learn more about the process, the various use cases, and why they should form part of your IP strategy in this comprehensive guide.
Patents are an essential aspect of intellectual property protection, granting inventors exclusive rights to control the production, usage, and sale of their inventions. However, a patent does not guarantee protection, as they can still face challenges to their validity, subjecting patent holders to potential legal risks.
In order to mitigate these risks, a patent validity or invalidity search may be conducted. Performed in different stages of the IP lifecycle, both searches evaluate the strength and validity of a patent, offering valuable insights into its enforceability and potential vulnerabilities.
In this guide, we’ll explore the basics of a patent validity or invalidity search, the various use cases, how they are conducted, and their role in your IP strategy.
The Basics:
An invalidity search is a type of prior art search that identifies references that may disclose the novel and inventive features claimed by a granted patent. The goal of this search is to find prior art that was not considered during the patent examination process, which could potentially invalidate the claims of a patent.
An invalidity search may be done in aid of litigation, to check the quality of a patent portfolio, and to challenge the validity of a competitor’s granted patents. Also called an opposition search, in the context of a lawsuit defendants attempt to “kill” the patent of interest (specifically its claims) through prior art searching.
On the other hand, a validity search is typically conducted from the perspective of someone seeking to enforce or defend a patent. The goal is to assess the strength of the patent’s claims and ensure that it can withstand challenges in court or other proceedings.
Though there are key differences in their focus and objectives, both searches involve a comprehensive examination of prior art and other relevant information to evaluate the strength and validity of a patent.
In the U.S., the legal definition of prior art is set out in 35 U.S.C. § 102, which defines prior art as “a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”
Prior art may include patent and non-patent literature (scientific journals, websites, product manuals, videos, standards, etc.) published before the effective date of the patent of interest.
Patents and patent applications. Prior patents and patent applications are a valuable source of prior art for invalidity searches. Patents that were filed before the challenged patent and have similar or identical claims can be used to show that the invention was not novel or non-obvious at the time the challenged patent was filed.
Non-patent literature (NPL). This includes academic papers, conference proceedings, technical reports, electronic or internet publications, magazine and newspaper articles, websites.
Applicant’s Admissions of Prior Art (AAPA). These are the declared known arts of the patent applicant and are included in the background of the patent specification.
Public use or on sale documents. Documents that describe or include products, methods, or services that are in public use or on sale also qualify as prior art. Depending on the restriction of the search, the document must include a date to prove that the product, method, or service is in public use or on sale before the effective date used in the search.
Use Cases
There are several reasons or use cases for conducting a patent validity or invalidity search. It can help a company make informed decisions regarding patent litigation, licensing and sale negotiations, and even market entry.
The primary reason for conducting an invalidity search is to challenge the validity of a patent. A party accused in a patent infringement case can use the search results to build a strong defense and challenge the patent in court or thru post-grant proceedings at the USPTO Patent Trial and Appeals Board (PTAB).
On the other hand, a validity search is conducted to assess a patent’s strength or identify potential weaknesses before engaging in 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 or unenforceable, the licensee may face infringement claims, 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.
Conducting 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.
Apart from patent validity and invalidity searches, which serve different purposes, there are other types of patent and prior art searches that an organization or IP professional might need in various stages of their innovation cycle.
A State of the Art search, also called a Collection Search, is conducted to gain a comprehensive view of a particular technology domain. It also provides insights about the level of development in a particular field. Insights from this search can be used to fine-tune an organization’s R&D strategy. An SOA search is considered a subset of a patent landscape analysis and tends to look into a more narrowed down aspect of a technology within a larger domain.
Patent landscaping provides a comprehensive view of the patents and patent applications that have been filed in a specific technology area, allowing companies and investors to identify trends, opportunities, and potential risks. The goal of this analysis is to identify key players, emerging technologies, and potential areas for innovation. It can identify potential partners or acquisition targets, and is a useful tool in deciding on R&D investments and patent strategy.
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Standards organizations set technical standards to ensure that the materials, products, methods and services offered to the public will perform consistently. In most cases, to comply with these technical standards, patented technology is involved. These patents are almost impossible not to infringe upon when complying with a technical standard. There are various types of standard essential patent-related searches. Assessing essentiality or validity before entering any licensing negotiations becomes imperative as not all SEPs may be valid.
Best Practices
Prior art searching is not a straightforward task and requires a lot of tweaking before you get relevant results. Plan out a search strategy. Before starting an invalidity search, the subject matter must be understood by each individual involved in the search.
The scope of the search is very important. Properly identifying effective filing date of the patent in suit will set the parameters of your search.
Looking at the patent file wrapper or prosecution history can help to identify which parts of the claim were deemed to be novel and inventive by the patent examiners. Determining the inventive concept allows you to prepare a good set of keywords for your search.
It is also recommended to have a list of databases where searching for patents and NPLs is possible. USPTO, EPO, WIPO, and Google Patents are some patent databases where searching is possible.
For NPLs, some of the databases are Google Scholar, ScienceDirect, and IEEE. HighWire, BioMed Central, SciTech Connect, EBSCO, MEDLINEPlus Health Information, Computing Research Repository, arXiv.org, Science.gov, etc. Some universities also make their students’ theses and dissertations available for public viewing or downloads.
While patents may have numerous pages of cited references, there remains a possibility that both the applicant or inventor have properly reviewed all of them. Even if these references were submitted as part of patent application documents, it doesn’t mean that those submissions do not contain any disclosure, teaching, or suggestion that could invalidate one or more claims of the patent at issue.
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While anyone can conduct a validity or invalidity search, 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 and challenge the patent-in-suit. A thorough, well-informed search can also help mitigate costs attributed to litigation, infringement, licensing. Parola Analytics offers patent attorney-led prior art searches and can be a useful resource for law firms and innovators alike. Find out more here.
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