The Why, When, and How of Patent Validity Search

What is a Patent Validity Search?

A patent validity search or patent invalidity search is a prior art search conducted to test whether a granted patent meets the provisions. The invalidity search, in particular, seeks prior art documents that may invalidate the claims of a target patent, whereas the validity search determines the enforceability of the claims of a target patent.

The above two searches are identical but have contrasting objectives. Both seek patent-invalidating prior art and are sometimes referred to collectively as “validity searches.” It may not matter whether you call it a “validity” or “invalidity” search; this is usually a matter of perspective.

Why Conduct a Patent Validity Search? 

An invention must be novel, non-obvious, and useful in order to be patentable. Industry knowledge and prior art search, as well as the language of the patent claims themselves, are used by a patent examiner to determine whether or not an invention meets these criteria. However, these criteria are quite subjective, and granting a valid patent with confidence necessitates an extremely detailed examination of relevant patent claims and technical literature. As a result of these factors, some granted patents are more powerful than others. Later in the life of a patent, a patent validity search may be needed to determine whether or not the invention is, in fact, novel and non-obvious. 

When to Conduct a Patent Validity Search? 

A patent validity search is similar to a patentability search and the strenuous patent examination process in many ways. A validity search, on the other hand, looks for related, invalidating prior art after a patent has been granted. The party conducting the patent search could be the patent owner or a third-party organization with an interest in the search results. There are several reasons why a company might want to know whether a patent is valid or invalid.

1. Defensive

When there is already a suspicion of infringement, a patent validity search is carried out defensively. In this scenario, there could be a question of whether a patent is infringing on a previous patent or if an unpatented technology is infringing on a granted patent. No matter which side of the court you’re on, a thorough patent validity search will almost certainly be required to support your case.

2. Offensive

A patent validity analysis should be more proactive. When determining the value and strength of a patented technology, a validity search can be conducted. Knowing the validity of a patent can help you monetize it strategically through licensing, sale, or mergers and acquisitions. 

How to Conduct a Patent Validity Search? 

First, a searcher must ascertain the priority dates of the patent claims. This is the filing date under the first-to-file system. Then, all pertinent prior art, including non-patent literature and patents, must be recognized. The prior art search should also include prior art from all over the world, not just the country where the patent is issued. The prior art outlined in the patent application and by the patent examiner is the starting point for this process. It can then be stretched to include tangentially related but uncited (and possibly unknown) literature that could invalidate the patent claims. 

This research is then forwarded to an attorney for evaluation of the patent’s validity. The attorney will assess the patent’s validity by comparing newly discovered prior art to the patent’s allowable subject matter. 

Our Methodology 

Invalidator+ by XLSCOUT is an artificial intelligence (AI)-enabled app that allows users to quickly conduct a first-pass invalidity or validity search by focusing on specific competitors’ patent claims. After entering the subject patent number, users can supervise the machine by selecting claims of interest, technical variations, or keywords. The Invalidator+ tool provides a list of relevant prior art results along with an automated patent validity search report. 

This AI-powered patent invalidation search tool combines intelligent patent parameters such as classification, citations, assignees, and so on with Patent Para-BERT technology to generate a quick patent validity search report that uncovers results based on contextual and expert parameters. Invalidator+ also utilizes reinforcement to provide accurate prior art for invalidation analysis. 

Benefits of using XLSCOUT’s Invalidator+     

• Easy-to-use interface  
• Quick first pass invalidity search by entering the patent number  
• Fully automated first invalidation search report  
• Analysis concentrating on specific claims  
• High Accuracy with Reinforcement Learning