Frequently Asked Questions - Patent Invalidity Search

An invalidity search is a rigorous search conducted to find earlier art that could challenge a patent that already exists. An invalidity search is a useful activity of intellectual property management because it helps organisations to review patent strength, to plan litigation defence, to review licensing opportunities, to make good business decisions about their intellectual property assets.

Invalidity searches give strategic advantage by allowing firms to counter infringement claims of others, license on favorable terms, identify gaps in competitor patent coverage, aid in merger and acquisitions due diligence work, and minimize litigation risk. Knowing the validity landscape helps firms make strategic, evidence-based intellectual property portfolio and competitive positioning initiatives.

Indeed, our invalidity search services encompass global patent databases and jurisdictions, thereby guaranteeing extensive coverage across international patent offices. We cater to a variety of industries and technology domains, offering customized research that meets sector-specific needs and takes into account regional patent law considerations.

We have expertise in all sectors of technology such as pharmaceuticals, biotechnology, electronics, telecommunication, mechanical engineering, software, medical devices, chemical compounds, and emerging sectors. Our multidisciplinary group assures that subject matter expertise is employed in each search.

The invalidity search procedure will generally include: patent claim examination, formulation of a search strategy, thorough database querying, identification and assessment of prior art, ranking of relevance, and thorough report drafting. The timeframes depend upon project complexity and will usually be 1 week for routine searches but expedited services can be provided to meet urgent needs.

Definitely. All invalidity searches are thoughtfully tailored to fit into particular client objectives, technological sophistication, and strategic priorities. We utilize tailored search parameters, concentrated claim analysis, industry-driven needs, and specialist prior art sources to provide concentrated and actionable results.

Invalidity searches must be conducted in response to infringement allegations, prior to initiating licensing negotiations, when preparing to litigate, when assessing competitor patents to strategic objectives, prior to introducing a product that may have patent challenges, or as a matter of routine day-to-day intellectual property portfolio upkeep and risk assessment.

Post-grant opposition timing is jurisdictionally variant. For most patent systems, opposition is admissible within set timeframes following patent grant – usually 9-12 months in jurisdictions such as the European Patent Office. Knowledge of such time bars is important to challenge invalidity timely.

Prior art is all publicly available information that is published before the patent’s date of priority. This can include granted patents, published patent applications, articles from scientific journals, technical publications, conference papers, product catalogs, user manuals, Internet sites, standards documents, and records of publicly demonstrated sales.

Prior art exists in varied sources: international patent databases (USPTO, EPO, WIPO, JPO), science and technology literature databases, industrial journals, product brochures, internet repositories, standards groups, trade magazines, and academia repositories.

Major databases are patent offices of major countries (USPTO, EPO, JPO, CNIPA), commercial services (Derwent Innovation, PatBase, Questel Orbit) that are available globally, Google Patents, technical literature databases (IEEE Xplore, PubMed, ScienceDirect), and special industry databases by field of technology.

A patent can be invalidated when prior art demonstrates a lack of novelty or obviousness, when patent disclosure or enablement is deficient, when claims are beyond the scope of an initial application, or when procedural errors have been made during prosecution. Federal courts and patent offices make formal invalidity determinations.

A complete invalidity report will include an executive summary, an in-depth claim chart that outlines prior art to patent claims, prior art references along with rankings of their relevances, a legal validity grounds analysis, substantiating evidence along with citability, visual comparison where necessary, and strategic recommendations to guide subsequent action.

Our searches are carried out by experienced patent analysts and technology experts having relevant domain knowledge. Teams usually consist of patent attorneys, ex-patent examiners, and subject matter experts having an in-depth understanding of both technical nuances as well as legal requirements pertaining to patent validity analysis.

Our analytical reports include concise, actionable analysis with in-depth claim charts, visual evidence displays, relevance scoring matrices, legal strength analyses, and strategic recommendations. Our technical and legal audience-enabled reports allow stakeholders to quickly grasp implications and make timely determinations.