Invalidation Through Patent Search
The patent invalidity search is also an important part of the domain of patent search services provided. The patent is granted on the premise of having a novel characteristic for which the inventor claims its authority and has the right to commercially exploit. For this, it is important to search whether any patents have almost similar claims and can give rise to any infringement proceedings. Patent invalidity search comes in very handy. This search helps to validate the patents’ claims or in another sense, it can help to invalidate the claims of the competitor’s patent if there arises any dispute or even without this. Generally, the invalidity search is the initial step that is taken when there is any such infringement proceeding being taken by any competitor. There are a lot of advantages to conducting an invalidation search.
This search is an extensive prior art search. The main aim is to check all prior art that is missed by the examiner during the prosecution stage. There might be any prior art that might be missed by the Patent Office and that prior art has the potential to claim infringement and question the novelty and non-obviousness. The main focus of this search is not on the finding of all the inventions/ideas but the main focus is with the claims of the patents. It is usually the first step that each company takes when it faces the risk of a potential or an actual patent infringement lawsuit.
The primary purpose as specified is to ascertain any prior art that might be missed by the patent examiner. So primarily, through this search, the patent of any third party can be challenged and can help to prepare effective arguments if there arise any such cases. This search is also used to access the strength of the patent. This strength of the patent is important for the market to ascertain the licensing opportunities.
Conducting an Invalidity Search
The invalidity search can be done by the inventor or even the third party for claiming invalidity for the patent. This search can be done individually, but it is recommended to take the service of an efficient firm and professional for the same. While conducting the invalidity search, it is important to establish the priority date for the invention. It is important to understand that the disclosure is made in the patent application published later than the filing date of the patent in question, it should also be considered in the prior art if the filing date is before. The important part is to ascertain the disclosure being made by the patent and the target claims. While finding the claim, if it matches the inventor’s patent, then there are easy chances to have the invalidation. While there are chances that it might not be easy to get the prior art and therefore, it can require more evidence which might be challenging.
Important is examining the examiner report over the patent and the nuances which are being started by it. For getting a patent it is important to have the allowable claims in consonance with the law. This can be easily found in the examiner report. If the invalidation search is done in such a way where there is a possibility of prior art being found over the allowable claims, then also it makes the job of invalidation very easy. Sometimes even the family patents can be used for invalidation even if the report says that it is abandoned. Even to the extent of the patent can be proved that it was on sale or in the public domain, then also it can be invalidated easily.
IPLF
This search extensively requires an expert in the field to provide an efficient service and report. The team at IPLF, endeavor to dig deep into the domain to find a critical prior art, that would potentially have been overlooked by the patent examiner. This allows the client to challenge another’s patent, and/or at the same time, be prepared to defend against potential and actual patent infringement allegations by a competitor (“validity”). The team at IPLF is well-equipped to carry out the validity/invalidity search and provide customized patent validation search reports. We also provide interim updates from time to time to keep the clients updated about the search progress.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back to us at support@ipandlegalfilings.com.
