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Patent Invalidity Search

Invalidate patent claims, defend your organization from patent infringement suits, and make well-informed decisions before investing in IP.

CONTENTS

What is a patent invalidity search?

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 granted patent.

The goal of a patent invalidity search is to find prior art that was not considered during the patent examination process, and could potentially invalidate the claims of a patent.

Why conduct a patent invalidity search?

1. Patent litigation

The primary reason for conducting a patent invalidity search is to challenge the validity of a patent. In patent infringement cases in the United States, federal courts have the power to decide on the validity and enforceability of a patent

2. Post-grant proceedings

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.

3. Patent enforcement

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 or 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.

4. ITC Section 337 Investigation

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.

5. Patent Licensing, Sale or Monetization

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.

6. Due diligence

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.

How do I conduct a patent invalidity search?

A prior art search, or 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.
  • Review the patent file wrapper or prosecution history to identify which parts of the claims were deemed to be novel and inventive by the patent examiners. This can be accessed through the Patent Center of the USPTO.
  • Examining amended or added claim elements in previously rejected claims can offer clues.
  • If the examiner allowed a claim after an amendment, it indicates the inventor’s perceived inventive step or concept.

4. Build search strings and optimize keywords 

  • Take note of keywords and search strings that yield relevant and irrelevant results may help in trial and error.
  • Keywords that are too specific may result in high relevance but miss out on other references of interest.
  •  Identify synonyms of important keywords to be able to expand the search and capture as many relevant references as possible.
  • For CPC searching, list out all possible classifications relevant to the invention. The CPCs related to the asserted can be a a good place to start, and then build from there.

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

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.

Patent Invalidity Search Services

  • Expert-led patent research

    A dedicated US-registered patent attorney, patent agent, and subject matter expert, leading and supervising your invalidity search projects to ensure high quality results.

  • Cost-effective, flexible arrangements

    At Parola Analytics, we are committed to finding the best solutions with our clients. Customize solutions that suit your requirements, budget, and easily integrate them with your workflow.

  • Easy-to navigate reports

    Concise, easy-to-navigate patent invalidity search reports and claims mapping charts that provide you with a clear visual presentation of relevant disclosures.

  • Collaborative approach

    Communicate directly with our patent research analysts at any point to fine-tune your search.

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What our clients are saying

Patent Invalidity Search

Protect, strengthen, and maximize the value of your patent portfolio through our comprehensive patent validity and invalidity search services.

What is a patent validity or invalidity search?

A patent validity or invalidity search is conducted to identify prior art that may disclose, and potentially challenge the novel and inventive features claimed by a granted patent.

Patent Litigation and Post-Grant Proceedings

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.

Patent Validity Searches and IP Strategy

patent validity or invalidity search is a valuable tool in crafting a robust intellectual property strategy. Before making significant investments on patents — whether in acquiring patents or licensing them — it is imperative to assess the validity and enforceability of a patent. No investor or company wants to find out after a considerable investment that a patent they’ve banked on can be easily invalidated by prior art.

Patent Invalidity Search Services

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.

  • Expert-led patent research

    A dedicated US-registered patent attorney, patent agent, and subject matter expert, leading and supervising your invalidity search projects to ensure high quality results.

  • Cost-effective, flexible arrangements

    At Parola Analytics, we are committed to finding the best solutions with our clients. Customize solutions that suit your requirements, budget, and easily integrate them with your workflow.

  • Easy-to navigate reports

    Concise, easy-to-navigate patent invalidity search reports and claims mapping charts that provide you with a clear visual presentation of relevant disclosures.

  • Collaborative approach

    Communicate directly with our patent research analysts at any point to fine-tune your search.

What our clients are saying

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Effective patent validity or invalidity searches start with a good understanding of the subject matter.
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