• last updated : 02 September, 2023

Patent Infringement: Using Patent Invalidation as a Defense

Category: Blog
patent infringement

If a patent infringement case is filed, the defendant and his/her patent attorneys have many options to consider in proving that the utilization of the patenting product or innovation was not done under infringement provisions and thus did not violate any patent infringement laws. Patent invalidation is one of the most commonly sought and used defenses. 

If the applicants meet the application and registration requirements, the United States Patent and Trademark Office may grant patents. However, in some cases, the office may come across patent applications that are still in use or are still protected by the patent term. Extenuating circumstances will almost certainly result in patent infringement lawsuits. 

How can Patent Invalidation be used as a Defense? 

The defendant in a patent infringement lawsuit may consult with their appointed attorney about using the concept of patent invalidation. This kind of infringement defense encompasses numerous criteria under federal provisions. These criteria may not only call into question an invention’s patent validity but may also render the patent invalid. Here are some instances of patent invalidation: 

  1. The invention in question, as claimed in the patent, is not considered novel and can be found in prior art. In other words, the invention is not considered novel because it has been used in the past. If the invention lacks novelty and demonstrates prior use, and such insights were not disclosed by the plaintiff, it may serve as grounds for invalidating the patent.
  2. The patent claims do not constitute what can be taken into account as an invention. Certain countries have specific regulations and definitions regarding the criteria of a patentable invention. If the description of the patent claims is not in conformance with an invention as per the country’s patent laws, it forms the basis for patent invalidation.
  3. Patents are typically granted to the original and true inventor of a product or invention. If it can be proved that the patent owner has obtained the patent illegally, the patent validity of that invention may be declared null and void. Furthermore, if the patent owner or holder is unable to provide sufficient information about the invention or disclose the true identity of the true inventor of the patent, it may form the basis for patent invalidation.

Insufficient Disclosure 

Inadequate disclosure of the invention can also result in patent invalidation. A patent is granted only if all relevant knowledge and information about the invention is disclosed to the public. The patent validity of the invention may be denied if the inventor fails to do so. The following types of information can be disclosed: 

  • All material information about the invention that is relevant 
  • The most efficient mode or method of manufacturing the invention 
  • The inventor’s entire material art collection 
  • All information pertaining to the patent validity of the invention, such as prior use as well as descriptions of the invention, made more than one year prior to the filing date for patent registration 

In accordance with these provisions, any information provided that is deemed to be false or made with the intent to deceive may also serve as grounds for patent invalidation.

The patent claims do not completely or successfully explain the invented product or innovation. 

Patent validity can be challenged in the United States under the “first to invent” statute. This statute gives consideration and preference to the inventor who first conceptualizes the innovation.

Under US patent laws, there is a one-year grace period during which an inventor can legitimately submit a patent application. But this condition only applies if the invention has already been published or made public. Any application filed after this expiry period may be used to challenge the patent validity of that specific innovation.

Our Methodology 

Invalidator+ by XLSCOUT is artificial intelligence (AI) enabled app that allows users to quickly conduct a first-pass invalidity search by focusing on specific competitors’ patent claims. Users can supervise the machine by selecting claims of interest and technical variations/keywords after entering the subject patent number. The Invalidator+ tool provides a list of relevant prior art results along with an automated invalidation 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 invalidation search that uncovers results based on contextual and expert parameters. Invalidator+ also utilizes Reinforcement to provide accurate prior art or 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
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