How to do a Patent Invalidity Search?

Assigning a Team/Research Team    

When your firm/organization receives a search request for an invalidity search, the very first step is to investigate the domain of the patent to be invalidated as well as all of the client’s instructions.   

Then, a team of experts is assigned, with a hierarchy ranging from a manager to research analysts, based on the domain and other factors such as committed submission dates, budget, and allotted hours/days for the process.   

Understanding the Patent   

An analyst’s job is to comprehend the patent and its claims. Depending on the client’s needs, the claims to be searched on may differ. It could be the broadest independent claim, all independent claims, all asserted claims, only dependent claims, and so on.

Reading the title, abstract, summary, and claims is part of the comprehension process. Then proceed to the description to comprehend the claim’s difficult or narrow parts. The file wrapper contains all of the drafts, the applicant’s arguments to the examiner’s rejections, notices of allowance, etc. It is used to understand the novelty of a claim.

For US/WO patents/applications, the file history and prosecution history can be obtained from the USPTO Patent Search or Espacenet. After that, the understanding is discussed in the meeting with the manager/team head as well as with the client. This ensures that everyone is on the same page in terms of understanding and requirements.

Clients can also communicate their necessities or any specific points that should be prioritized during the invalidity search. They could have conducted an internal preliminary search on the subject patent, resulting in the discovery of some claim elements.

Clients can also share those so that searchers can exclude previously known citations from their search range and concentrate their search on limitations not disclosed in previously known art. Furthermore, the clients may be aware of some parties, assignees, or players who are very active in the domain. Assignees that can inform the searchers about them, allowing them to focus their attention specifically on such assignees.

Determining the Invalidity Search Cut-off Date/Date for Search    

In most cases, the invalidity search cut-off date is the subject patent’s earliest filing date or earliest priority date. If the subject patent is a CIP (Continuation-in-Part) of another patent application, there may be an exception.   

The analyst determines whether any part/text of the target claim(s) corresponds to the recently added description in the CIP in this case. If a portion of the claim falls within the scope of this newly added description, the search cut-off date for that portion of the claim is the CIP filing date, and the search cut-off date for the remainder of the claim is the earliest priority date.   

Furthermore, if the entire target claim falls within the scope of the newly added description, the search cut-off date for the entire claim would be the CIP’s filing date.