A patent invalidity search, also known as an opposition search, is to identify patent and non-patent documents that impact the claims of a specific patent. It helps to block patents and establish the solidity of a patent portfolio.
When a competitor attacks you with patent infringement claims, your best revert is to prove the patent invalid. A patent validity/invalidity search calculates a patent’s strength to see how much it protects against validity claims.
Using the results from this search, you can block patents and validate a patent portfolio’s claims, which can also be helpful during licensing or company acquisition.
How Do You Search for Patent Invalidity?
Before conducting a patent invalidity search, the first step is establishing the priority date of the patent claims. Any publically available disclosures before the patent filing date consider as prior art.
It is necessary to examine the claims of the invalidated patent to identify the first patent application in the family that reveals all of the claims restrictions, or at least the independent claim.
It is considered the best practice for filing the patent date when conducting a patent invalidity search.
What Are the Types of Patent Invalidity/Opposition Searches?
There are various kinds of patent searches, and some conducted before filing the patent. Each of these searches has its purpose and reasons for being conducted. There are mainly four types of patent search:
- Patentability Search
- Freedom-to-Operate Search
- Patent Invalidity Search
- State of the Art Search
Patentability Search
A patentability search is also known as a novelty search, and it conducts before filing a patent application to ensure whether the invention is new. It is an essential search because nobody wants to lose their hard-earned money spent on drafting and filing the patent application. The patent application gets rejected if the examiner finds any similar concept to your invention.
Freedom-to-Operate Search
Freedom to operate Search reference selling one’s product or service without infringing another party’s patent rights. When a patent gets granted, you have the right to prevent people from using your patented technology. However, everyone stops infringing on your patent. Consider your invention uses any other kind of invention in the form of a process, the machine, or the composition of matter. In that case, the freedom to operate searches for your product in the market becomes questionable. You risk infringing on someone else’s IP, which comes with its own set of consequences.
Patent Invalidity Search
A Patent Validity Search is a search conducted to question the patent office’s validity/enforceability of the patent claims. These searches differ based on the objective of the search. Patent holders or buyers often perform validity searches before claiming, licensing, buying, or selling a patent to confirm the enforceability of their claims. These searches can help one take a better-informed stance. The entire patent infringement lawsuit depends on either the validity of the patent or product infringement.
State-of-the-Art Search
A State of the Art Search is a comprehensive review of all the patent or non-patent literature in a particular field. The main aim is to make a larger picture of the state of play in a defined technology field. A patent Landscape Search is another way of assessing the State of the Art and attaining a more visual indication of the present situation.
State of the Art patent search conducts over a broad list of patent searches. It provides a longtime market advantage by helping them to make strategic decisions at the corporate level.
How Can a Patent be Invalidated?
A patent can only be declared invalid if all of its claims, including any independent claims, are declared invalid. The analyst either finds a piece of pertinent prior art that addresses every aspect of the claims or at least two pieces of the prior art.
Additionally, if a single independent patent claim is invalidated, only that claim is rejected, and the remaining invention claims are still valid. The invention’s claims would need to be invalid for the entire patent to be deemed invalid. The prior arts discussed here include both patents and non-patent publications, which may also include tangible goods or sales evidence.
Additionally, the invention itself may be considered prior art. US law gives inventors and patent applicants a grace period of one year from the time they publicly disclose their innovation to file a patent application.
Patent Validity Prior Art Search
Before granting a license, selling, or purchasing a patent, the client or any pertinent search company must order a prior art search to evaluate the inventive concept and determine whether the patent is valid. Before applying for a patent, the inventor and their innovation will have a stronger negotiation position if they have some background information and market knowledge.
How Can a Patent be Invalidated?
The following are the primary grounds on which the patent can invalidate:
- Novelty Grounds
- Obviousness Grounds
- The subject of the patent claim is not an invention.
- Patent wrongfully obtained.
- Insufficient disclosure of the invention.
- Claims also include if the patent description provided is not substantiated.
- Failure to disclose information relating to foreign appliances.
Why PATHtoIP® for Invalidity/Opposition Search?
We at PATHtoIP® perform Invalidity/Validity Searches in cases where our clients need to defend their case against infringement, licensing, or any other scenario. We also conduct Validity Searches which help clients during Mergers and Acquisitions, licensing, or valuation.
We have years of experience in Invalidity/Validity Searches in different subject domains. We can also undertake various Patent Validity projects to ensure enforceability to the best of our capabilities.
We extensively search patents, technical publications, and other written materials that may be relevant to the patented invention. We carefully scope the search parameters to focus on the most relevant sources. We are passionate about our work and aim to empower the most innovative and advanced entities via our solutions. Our focus is always aligning with our clients. We aspire to assist our clients in tackling their issues with technology-driven problems.