• last updated : 05 September, 2023

The Patent Invalidation Process

Category: Blog
patent invalidation

Patents grant the patent holder exclusive legal rights that prevent others from using, manufacturing, or selling their invention. Even if the owner is granted proprietary rights, they are not protected from any challenges to the patent’s validity. The definition of patent invalidation is the act of recognizing grounds on which an existing patent may be revoked or opposed. In short, the goal is to assist in the blocking of any claims that may hinder the robustness of a company’s portfolio. 

Laying the Foundation 

Before an invalidity claim can be invoked, the patent invalidation procedure necessitates extensive research into different aspects of the patent. Generally, to invalidate a patent, it is necessary to investigate the grounds on which the patent is currently validated. Therefore, the following aspects must be investigated:

1. Patent Validity Duration

Knowing how long a patent is valid aids in determining the utility of pursuing invalidation. Most patents are safeguarded by the patent priority date, which provides the owner with exclusive usage rights and restricts competitors from encroaching. Provided that design patents are typically granted for 14 years and utility patents for 20 years in the United States.

2. Patent Validity Premise

It is important to comprehend the points that establish the patent’s validity. The USPTO lists the following requirements for patentability in the United States: 

  • Statutory means that the subject matter of the patent must be good enough to qualify according to the guidelines. Patentable subjects include processes, manufactured articles, machines, and matter compositions, whereas non-statutory inventions include data structures, natural laws, books, music, and so on. 
  • According to 35 U.S.C. 102, an innovation must be new, unique, and filed within one year of public disclosure. Failure to follow the one-year rule may result in the rejection of a patent. Moreover, prior art also needs to be investigated to look into previous patents that may be very similar to the applied patent. If the patent is discovered to be lacking in novelty, the application may be rejected. 
  • To be valid, the patent must be useful; that is, it must have practical utility, beneficial utility, and operability. Therefore, utility patents must have a specific purpose. With this in mind, plant and design patents are exempted from this requirement. 
  • Another criterion for patent validity is non-obviousness. To a person with ordinary skills, the innovation must be considered non-obvious. 

6 Ways of Invalidating a Patent 

A petitioner wishing to challenge an existing patent may take one or more of the following approaches: 

  • Known Prior Art: Attempting to find any public disclosures of the patent prior to the priority date. This process is known as prior art search, where prior art refers to such disclosures. This is the most common method of challenging the patent’s validity. 
  • Evidence of Use Prior to Filing: If it can be demonstrated that a patent was in use or publicly available 12 months before filing, it can be used as the ground for invalidation because it no longer qualifies as an original invention. 
  • Patent Formation: A frequently overlooked practice is determining whether a patent even exists. The first step in attempting to invalidate a patent should be to determine whether the patent was ever filed or submitted.  
  • File Wrapper History: This entails ensuring that all the guidelines and requirements for filing a patent have been strictly followed by the applicant. Since, any detail that has been overlooked may result in invalidation. 
  • An Inventor’s Oath: It is a statutory requirement in the patent filing process that requires the inventor and joint inventors to be identified in their legal names. Hence, the declaration must include the names of all inventors who contributed to the invention. Contrarily, a delay in filing the inventor’s oath, or failure to file it at all, can result in patent invalidation. 
  • Ensuring a Tight Priority Chain: A continuing patent application provides many benefits to the inventor because it allows them to obtain patent protection for subject matter that they might have overlooked previously. However, in order to benefit from this convenience, the applicant must strictly adhere to the claim priority in the filing process. A break in the priority chain can be used to invalidate a patent. 


The results of the patent invalidation search and analysis are compiled and mapped into an Invalidation Report. The entire process is extremely difficult and necessitates extensive knowledge of all the highly desired aspects of patent law. It is best to take assistance from an expert with extensive knowledge of the subject. 

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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