What Is Patent Invalidity Search And How To Perform One

Patent invalidation search is usually executed for validating the patent claim or for invalidating the competitor's patent claim. It is one of the initial beginning stages when you face infringement lawsuits against your patent. People also conduct patent invalidity searches to assist with the investigation of patent strength while discovering potential opportunities for licensing. This type of search is a type of extensive prior art search where the people conduct it following the patent insurance. The primary object of invalidation search is to identify any prior art that might have been missed by the USPTO examiner while invalidating the patent. 

An invalidity search is entirely different from a regular prior art search since the overall invention or idea is not the search point. In place of that, a patent invalidity search mainly focuses on the language used in the claim. With all these in mind, it is significant that any post-grant associated claim construction, prior litigation, and prosecution history evaluates to make sure that the claim components are present in the possible scope and interpretation context. The entire purpose of this search type is to look deep into the domain inside to find out the significant prior art that a patent authority might have missed. This search process can either help in facilitating another patent challenge of the person or assists with the defense preparation against the patent infringement allegation. 

Even before you begin conducting an invalidity search, the first call port should be establishing the claim priority date of the required patent in question. Usually, any disclosure publicly presents before filing for the patent date is considered as prior art. Additionally, if anyone published a patent application after the filing of the patent date is invalidated, the filing date of the application of the published patent should be before the filing of the patent date in question. The patent application that is published is also known as prior art. 

 

You should analyze the patent invalidity search claim for ascertaining the patent's first application in the entire family, which also discovers all of the claim restrictions of independent claims for invalidating the patent. You should unveil the bulk features in the filed patent applications previously. However, there can be some features that only discover if the patent is invalidated. If this is the case, these limitations or features distinguish as the claim components of the questionable patent. It means that you can dispute all the priority dates for the claims that should be the patent filing date for invalidation. To summarize it all, it is the best practice for considering the patent filing date when you are about to conduct a patent invalidity search. 

To make the Invalidity patent search effective, It is significant that you should include an extensive understanding of the patent and know about what type of prior art you are looking for. Before jumping into any action, you should take a quick patent overview and understand the patent art disclosure situation. Understanding the patent claims and determining the patent scope will offer you a clear prior art direction for searching prior art. There are different approaches on how to invalidate a patent. Let us have a quick look into some of them.

 

 

Examining the file wrapping information will help you explore more about the claim rejections by the patent authorities, recorded prior art, and the rejection grounds in the history of post-grant proceedings and prosecution history. It is significant to examine how much the inventor has disclosed by comparing with the prior art and target claims. If you can find any prior art to reveal the claim, this means that the patent can be weak, and there is an easy chance of the patent being invalidated. You cannot disclose some patents with a single prior art reference, and be more challenging. 

 

With limited time it becomes more challenging to perform a comprehensive search. Quality insight determines every claiming element with the prior art for helping you to discover how much scope for the patent was modified or narrowed down prosecution or PTAB proceedings. These properties will allow you to perform a thorough search that you can efficiently do under time constraints. 

 

 

The prior art includes more relevance to the patentability search claim than one referred by the patent examiner. Besides the references of the prior art in the prosecution history, second-degree prior art and patent family prior art are some of the perfect places for discovering strong prior art. You can find second-degree family art in the following ways.

 

The family's prior art shows the disclosed patent prior art. You might use any family related to the prior art as an invalidity search, especially the citations of those who are abandoning like expired, inactive, or non-payment family members. If anyone leaves any patent family member, there is an ideal chance that you should implement the citation against the invalidation patent proof.

 

 

The discovery might be on sale or publicly available in the USA within one year before the date of the patent application filing. You have to look for proof that will indicate that the invention was present for public use or on sale. The abroad patent, detailed publication, or previously inventor recognized in the USA before the applicant invention, and then you might invalidate patent validity search. So carry out the invalidation search carefully and check if your discovery is infringing some other issued patents or not.

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