A patent invalidity search is a prior art search conducted on a granted patent in order to invalidate the patent’s claims (also known as the subject patent) on the basis of novelty, obviousness, and/or inventive step.
It is also referred to as an invalidation search or an opposition search. These searches are carried out in order to identify relevant patent and non-patent literature that is consistent with the claims of the subject patent and is frequently overlooked by the examiner during examination.
These prior arts are advantageous if they were published or made available to the public prior to the subject patent’s earliest filing date. This is in compliance with various laws that have been declared invalid by various jurisdictions.
Types of Patent Invalidity Search
A validity or validation search is one that is performed to determine the validity of claims. The steps for performing a validity search and an invalidity search are similar. The only difference is who is interested in conducting the search.
To elaborate, an invalidity search is conducted for an entity against whom a lawsuit has been filed (defendant). The defendant attempts to fight the lawsuit by killing the patent in question, on the basis of which the lawsuit is filed.
The validity search, on the other hand, is performed by the patent assignee themselves to determine whether their portfolio is strong or what are the chances that the patent is valid enough that it will not be invalidated in the future if a lawsuit is filed.
These searches are carried out in the following circumstances:
- Infringement remedy
When a patent owner (plaintiff, the one who files the case) sues a competitor (Defendant) in a court of law for unauthorized/illegal use of a protected (patented) invention, the defendant resorts to an invalidity search to render the claims invalid. There will be no infringement suit if the patent grant is declared invalid. As a result, it is used as a defense against infringement claims.
- Before filing an infringement suit
The patent holder may request a validity search to ensure the validity of the claims prior to suing an alleged infringer. If no satisfactory prior art is found during the search, the subject patent’s claims are assumed to be novel, non-obvious, and inventive. This allegedly assures the patent holder that they can file a case against potential infringers.
- During Licensing
A validity search on behalf of a potential licensor interested in licensing the invention can also be performed. To manufacture or sell the products revealing the claimed invention, the interested party (licensor) would require a license from the patent holder. As a result, before investing a significant amount of money and time in the licensing process, the potential licensor requests a validity search. This enables the licensor to assess the portfolio strength of the patent/patents of the assignee they intend to license.
- Mergers and Acquisitions
When company1 is interested in acquiring company2 in order to acquire company2’s IP portfolio, company1 requests a valuation of the patent portfolio and a validity search on the patent portfolio to determine the value of company2’s patents. A patent with valid claims increases the patent’s value.
Furthermore, the patent portfolio can be ranked based on parameters such as the number of cited references, the largest invention families, the number of independent and dependent claims, litigation, reassignment, and so on. The higher a patent’s rank, the greater its value in terms of strength.
Scope of Search
Patent validity/ invalidity searches are always conducted on the claims of the subject patent, with little emphasis placed on the subject matter and various embodiments described in the description. The claims, however, are interpreted in light of the subject matter.
The client can have an invalidity search performed on various claims that have been decided on the basis of infringement contentions. This information can be obtained from a complaint letter filed in the lawsuit. Complaint letters are available from a variety of sources, including RPX, USPTO, and others.
Patent Invalidity Search Strategy
The invalidity search begins with the assignment of a team that is familiar with the patent invention and the establishment of a search cut-off date. In general, the search cut-off date is the patent’s earliest priority date (also known as the earliest filing date).
Any patent or non-patent literature disclosing the claimed invention or offering the idea of the invention to a person skilled in the art can be used to invalidate the patent in question. Prior art must be published, used, known, or sold before this date in order to be considered valid prior art and used in a court of law to prove the claim’s invalidity.
There are various search criteria for identifying prior art. A collection of search strings is compiled and applied to numerous databases. Search strings are created using various technical and non-technical keywords and related synonyms, international classifications such as IPC, CPC, ECLA, FI/F-terms, and so on, as well as the most active domain players and other strategies.
As a first pass search strategy, various searches like citation analysis, similar searches or family analysis in other jurisdictions, and their prosecution history analysis can be performed.
The Citation Analysis examines a patent set A or B, where A represents forward citations of backward citations of the subject patent and B represents backward citations of forward citations of the subject patent. These citations A, B can be OR’ed or AND’ed depending on the number of search results, search time, and so on. It should be noted that in this case, A and B are merely descriptive and can be used interchangeably.
Family Analysis in other jurisdictions as well as their prosecution history analysis is a data set that includes backward citations of backward citations of family members of the subject patent in addition to backward citations and their family members of the subject patent. This appears absurd, but it makes perfect sense.
This is because, in some cases, the subject patent’s family members may have one or more unique backward citations than the subject patent itself. These backward citations, which are not cited on the face of the subject patent, can thus be used to invalidate the subject patent. As a result, it is prudent to investigate this data set.
A similar search is simply a collection of patents that are in the same domain of technology as the subject patent. As a result, they may be useful.
Along with patent searches, non-patent searches should be conducted on databases such as Google, IEEE Xplore, Science Direct, and others. Non-patent prior art must always be published or made available to the public before the search deadline.
Aside from that, a standard-based search can be conducted on various standard databases such as IETF, ITSE, 3GPP, and so on.
There are various databases, both paid and free, where search strings can be formed and applied to perform a search. XLSCOUT’s AI and NLP-based search tool allows you to quickly invalidate a patent by simply entering the patent number.
Automated patent invalidity search merges intelligent patent parameters such as classification, citations, assignees, and so on with Natural Language Processing models to produce a quick Patent invalidity search that uncovers results on the basis of contextual and expert parameters.
How to Perform 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 search.
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 most general independent claim, all independent claims, all asserted claims (claims asserted in a currently underway litigation case and the complaint letter containing the same can be extracted from RPX insight), or 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 history/file wrapper, which includes all of the drafts, arguments by the applicant to the rejections by the examiner, notices of allowance, etc., 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 Public Pair or Espacenet. After that, the understanding is discussed in the meeting with the manager/team head as well as with the client to ensure 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 search. Clients may have conducted an internal preliminary search on the subject patent, which may have resulted in the discovery of a few 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 and can inform the searchers about them, allowing them to focus their attention specifically on such assignees.
Determining the Search Cut-off Date/Date for Search
In most cases, the 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.
What Constitutes Prior-Art in Invalidation?
Before starting the search, the analyst must understand what patent and non-patent citations can be considered prior-art and, for a US subject or target patent, what US patent laws apply.
According to US Patent Laws, the Pre-AIA laws apply if the search cut-off date is before March 16, 2013, and the Post-AIA (AIA) laws apply if the search cut-off date is on or after March 16, 2013.
All citations that meet the requirements of US patent law can be considered prior-art. Patents, patent applications, and non-patent citations are examples of citations. Non-patent citations can include research papers, theses, standards, white papers, conversations, e-mails, newsletters, articles, products, videos, blogposts, and any other internet publications, among other things.
How to Invalidate a Patent?
Invalidating a patent implies invalidating its claims or the subject patent’s independent claim. The analyst finds either a single relevant prior art that covers all of the claims’ features or a combination of at least two prior art.
Furthermore, if a single independent claim of a patent is invalidated, it implies that only that claim of the patent is invalidated, not the entire patent, and all other claims of the patent remain in force. To invalidate the entire patent, all of the patent’s claims would have to be invalidated. Prior art includes not only patents but also non-patent literature, which may include products or proof of sale.
Additionally, the inventor’s subject matter can serve as prior art. Inventors/ applicants in the United States have a one-year grace period after publicly disclosing their invention to file a patent application.
In this case, if the document(s) are published within one year of the patent application’s filing date, they will not be considered prior-art. However, if this document or another by the same inventor exists one year prior to the filing date/priority date, it can be considered prior art.
Furthermore, if you come across a document or patent with at least one distinct inventor from your subject patent inventor, that document is not required to be published one year before as this law of grace period will not apply. Even if the document is only filed before the search cut-off date, it can serve as prior art.
Note: To be used in conjunction to invalidate a patent, the citations must be published prior to the search cut-off date.
How to Search for Prior Arts?
To begin, the analyst can generate an exclusion list, which includes a list of citations (patents and non-patents) cited on the face of the subject patent and their family members. These citations are generally excluded from the scope of the search, but an exception could be made based on the client’s needs.
This includes a list of citations cited by the examiner during examination, which are also discussed in the file history, and by using these patents we can gain valuable insights into the technology and which types of citations should be excluded from the search scope.
The arguments in the file history can also be used to understand the novel key features and points that the applicant has attempted to defend. The file history also contains the examiner’s search strategies, which can provide the analyst with ideas for constructing search strings or strategies as well as some valuable keywords.
Following that, we can begin with some free automated searching on Google or Google Patents. Furthermore, one can use XSCOUT AI-based tools, which include an invalidator tool, where one can enter the patent number to be invalidated and it will generate a bucket of patents automatically.
Other jurisdictions’ family analysis and prosecution history analysis: In this search, the bucket containing the backward citations of the subject patent’s family members is extracted, and the patents on the exclusion list are removed from the former bucket. The list of remaining patents can be analyzed to find relevant prior art.
Then we can perform some basic searches like:
This is the bucket of patents produced by extracting the backward citations of the subject patent’s forward citations as well as the forward citations of the subject patent’s backward citations. This bucket is then reduced by attaching the search cut-off date, as well as a few classes or search keywords. Citation Analysis can be performed on any database.
These intelligent methods of searching assist in quickly locating relevant prior art and also provide the analyst/researcher with deeper insights, keywords, synonyms, and/or classes that can be useful in steering the search further. Furthermore, certain citations may already be known to the client. This can give the searcher in-depth knowledge of the domain, the missing factors of the claim to be found, important assignees and classes, and so on.
In the next step of the search, the analyst can use keyword and class-based strategies/strings. These strategies can be developed using a variety of paid and free databases, including Orbit, XLSCOUT, Derwent, Patsnap, Google patents, Lens.org, Google, IEEE, IETF standards, ETSI, 3GPP standards, Espacenet, J-PlatPat, and others. These strategies cover the claim scope by going from narrow to broad, using all possible methods, key words, strings, and classes.
Following that, the analyst’s bucket of citations/patents/non-patents extracted from the above searching process can be utilized in the following ways:
- The top assignees and inventors in the bucket can be extracted and specifically searched for
- Analysis of top patent/non-patent citations/references on the face
- From these patents, classes can be extracted and used in search strategies
- You can also apply the automated searching strategies to your most relevant/closely related patent references/citations
These searching procedures will continue to change depending on various factors such as client requirements, project budget, or subject patent domain, and so on. For example, basic searching will be incorporated and will play a significant role in telecom/wireless industry patents. Next, these searches include databases from all over the world, not just the United States.
Prior-arts Analysis and Mapping
It is critical to narrow down your bucket of short-listed citations to the ones that are closest to being available or identified. The citations are assessed with respect to each claim feature, and the citations that have most of the claim features are chosen from the bucket above the others in the domain.
The analyst’s next step is to extract the relevant text and provide it in a specific format as per the client’s requirements, which will provide a thorough/deep analysis of the closest citations. This can be done in one of two ways:
Summary Type Mapping
In this type of mapping, relevant excerpts from a relevant patent are provided. The relevant excerpts may also be highlighted in a specific color in accordance with the claim requirements (for example, the relevant text is in red bold and the rest of the text is in black).
This also includes a searcher’s comment written in layman’s language to provide a quick summary of what is and is not present in the mapped citation. This can also assist the client in determining whether the analyst inferred any equipment, keyword, etc. with what was required as per the claims.
Claim Chart Mapping
The claims are broken down into key elements in this format, and then the relevant text for each key feature or key element of the claim is provided. The text associated with a particular feature is highlighted in a different color, and this is true for all features. Furthermore, searcher comments are provided for all key features, allowing the client to thoroughly understand each key feature of the claim separately. Furthermore, this format is useful when we are using multiple references to invalidate a claim (s).
For example, if we use a combination of two references, the missing elements/features can be easily identified from the mapping of the first reference, and the second reference covering those missing pieces can be adjacently mapped to the first reference, providing a clear and high-level assessment to the client.
When the duration of the search/project is limited and the quantity of references to be presented to the client is on the higher end, the summary type format is preferable. While the claim chart format provides a high-level understanding of a specific reference, it also takes longer to complete than summary-type reports.
After mapping the most accurate citations, they are included in a report. The report can be in word, excel, or ppt format. The report includes not only the best identified citations, but also the closest possible citations or other identified citations that are broadly related to the invention.
These broadly related citations can be listed along with their bibliographic information. The report may also include a key feature analysis table that shows which features from a mapped reference are covered, not covered, or have been inferred by the analyst, allowing the client to conduct a quick analysis of the mapped references.
- Interim Reports: In most cases, we prefer to send our clients interim reports, which are reports at regular intervals throughout the project, followed by a final report. This informs the client about what has been identified at various stages/intervals of the search as well as the search progress. Based on the interim reports, the client can assist the analyst in steering the search in the direction of their expectations and requirements.
- Quality Control: The report is further quality checked at various levels, including a project lead and then the project manager, to ensure that only the highest quality reports are forwarded to our clients. The quality of the report includes not only the formatting but also the high-level discussions of the recognized and mapped references.
We also encourage regular phone or email conversations with our clients in order to meet their needs and expectations during the search or whenever they need our help. We usually begin with a project initiation/introduction call/email with the client to learn about their expectations/requirements and criteria for the search.
Furthermore, report discussions are part of the communications; for example, interim reports are discussed with the client(s) on a regular basis or whenever the client requires them, and we steer our search accordingly based on the inputs. This keeps the search on track and ensures that no part of the search is missed.
Cost of Patent Invalidity Search
An invalidity search, also known as patent invalidity search or prior art search, is a search on a patent (generally referred to as a “subject patent”) to invalidate, kill, or disable a patent.
The invalidity search can be conducted by independent searchers or researchers (freelancers), or it can be performed by an organization. The cost of invalidating a patent is determined by a number of factors.
Who Is Conducting the Search?
This is the first cost-determining factor in the invalidity search.
When compared to organizations, the cost of using free lancers is lower. However, the search quality and standard, as well as the depth of the search, are undoubtedly influenced.
This is because organizations have a team of experts with a wide range of expertise in various technology fields, which enables them to better understand the invention to be invalidated and perform a better search than an individual. Furthermore, organizations such as XLSCOUT generally allocate or assign a group of people or a team to a specific case.
The team will include searchers with varying levels of experience, as well as a team lead who will oversee the search quality and references identified, ensuring that nothing is overlooked. There will also be additional people working to improve the search quality, report quality, and client interactions, ensuring that no stone is left unturned.
While an individual may charge as little as $1,000 for an invalidity search, organizations typically start at $2,500. This is the starting point for the search cost, which may rise further depending on a variety of other factors. Also, keep in mind that this is not a standard or fixed value, and it may differ from person to person and organization to organization.
The Search’s Complexity or Scope?
The complex nature of the subject patent invention, which becomes the second determining factor when calculating the cost of search, also influences the cost of invalidity search. Easy inventions that are simple in the domain and have fewer elements to be searched upon, or inventions that are simple and have smaller and simpler claims, as well as a lower number of claims to be searched, can be completed on a lower budget.
On the other hand, complex inventions that belong to a difficult domain or have a large number of claim elements that must be invalidated necessitate a large budget. This is due to the fact that complex inventions will require more time to comprehend, develop search strings, and analyze the results of those search strings.
Furthermore, if an invention is complex or has a large number of claim elements to be searched on, different and larger search strings covering all of the elements must be applied and analyzed in order to cover all possible prior art.
As a result of this second factor, the patent invalidity search may begin at $2500 and range depending on the complexity of the invention.
Client Budget, Needs, and Expectations
Client budget, timeline, requirements, and expectations are a third major deciding factor in determining the budget of a patent invalidity search. Clients have varying budgets and requirements, which are further influenced by a variety of factors. So the cost of patent invalidation search is determined based on their budget and requirements.
Based on the complexity of the case, clients choose or are given a budget. It is challenging to invalidate a patent that has been the subject of multiple legal proceedings. Furthermore, the scope of arguments and prior art disclosed by the examiner and inventor himself determines the scope of finding prior art when a patent is examined at the patent office prior to granting the patent.
A patent with fewer known prior arts provides the searcher with a broader area to cover or a larger number of citations left out that might be used against the patent. However, if a patent has many backward citations and the examiner has also identified various prior arts, the searcher has a large number of prior arts to exclude from the scope of the search, making it more difficult for a patent to be invalidated.
Non-Patent and Standard-Based Searches
Furthermore, while performing an invalidation search, a non-patent literature search is performed in addition to a patent search on various databases, which increases the cost of the invalidation search. Non-patent searches can also be conducted on databases such as Google, IEEE, Science Direct, Springer, and others.
The non-patent invalidation search may also include standard-based search, in which the search is conducted on various IETF, ITSE, and 3GPP standards based on the scope of the invention. This non-patent search could cost as little as $1,500. The standard search may also begin at $1,500.
The invalidation search can also be done in different languages, which means that the search strings and search hits can be analyzed in different countries’ databases and languages. This is due to the fact that some inventions are better covered, explored, researched, or filed in specific countries. For example, in China, an invention may have more literature than in the United States.
In such a case, it is prudent to conduct a Chinese native language search to avoid missing any prior art that could work to invalidate the patent in question. Similarly, native Korean and Japanese language searches are possible.
XLSCOUT has experts in various countries who are fluent in various native languages and can perform native searches on various databases. This would be an additional cost factor to consider when determining the budget for a specific search. The native search may begin at $1,500.
We justify our costs by providing the highest quality and subject matter to our clients. We have experts in various fields and technologies in various countries to meet the needs and expectations of our clients. We also have experts with a variety of research papers who have extensive knowledge and expertise in the non-patent literature, allowing us to conduct high-level searches.
Search Report Format
The budget or cost of invalidation search is also determined by the patent invalidity search report format selected by the client. To present the search results, various search report formats (discussed in detail below) are used. For example, a word report file containing identified citations in summarized form along with the searcher’s comment can be provided.
A word report file containing a thorough analysis of search results against the subject patent in question, with each key aspect mapped with respect to the identified results and a searcher’s comment, can also be provided.
In another case, the same information can be provided in an excel spreadsheet in which each identified patent is summarized or mapped against each key aspect of the subject patent claim (s). We can also offer simply highlighted PDF citations of the identified citations, with relevant text highlighted, to save time in report creation and devote more time to searching.
We also offer the identified relevant citations in a table format along with their bibliographic information. So, we can say that different patent invalidity search report formats are selected based on budget, client expectations, and requirements.
In general, the less time it takes to prepare a report, the less time it takes to prepare it, and thus the lower the budget required; and the more detailed a report, the more time it takes to prepare, and thus the higher the budget required. In addition to the search budget, a minimum budget of $200 is required for claim charted reports.
Who Conducts the Patent Invalidity Search?
Private firms hire professionals to conduct invalidity searches. These firms (for example, XLSCOUT) are registered and have professionals with extensive knowledge of the IP industry. A non-disclosure agreement (NDA) is signed for all searches before the search is conducted by hired professionals known as IP/patent researchers/analysts.
A customer has several options when it comes to performing an invalidation search or any other IP search. The search, for example, could be carried out by an individual or an organization. Unlike an individual who can only offer limited expertise in a specific technology or IP field, an organization has a diverse workforce with extensive IP experience and expertise in a variety of technology domains.
When is it necessary to conduct a patent invalidity search?
It is a prior art search used to determine the validity or authenticity of patent claims or to invalidate a patent claim from a previously issued patent. It is a date-restricted search for prior art revealing the subject patent technology.
The search is carried out to discover prior art that discloses a claim language constraint rather than the entire subject invention. The search provides opposition to a patent claim that has already been granted. The search provides protection for an entity involved in a patent infringement case by invalidating the claims of interest of the concerned patent.
It is carried out to determine whether an issued patent is valid under the following criteria:
- Non-Obviousness, and
Conditions/Reasons for the Search
The following grounds should be followed when conducting an invalidity search:
- The presence of prior public data or use, or publication or sale of the patented technology, process, product, or service prior to the priority date of the subject patent, where the priority date is the earliest filing date of a patent in the patent office, such as the USPTO, EPO, WIPO, IPO India, and others.
- Objections/rejections made by the examiner during prosecution or examination of the subject patent (for example, in the United States: 35 U.S. Code 101, 102, 103 rejections).
The Search Procedure/SOPs
The steps or procedures outlined below are used to conduct the invalidity search.
- Understanding the Subject Patent: This includes a thorough technical understanding of the patent’s disclosed subject invention/technology.
- Understanding of Interested Claim Limitations/Elements: This includes understanding of claim language in relation to disclosure in the subject patent’s description.
- Prosecution History/File Wrapper Analysis: This includes analyzing non-final rejections, notices of allowance, and citations cited during the subject invention’s prosecution.
- Analysis of Existing Patent and Non-Patent Citations: This includes an analysis and understanding of citations (both patent and non-patent) cited (backward citations) on the face of the subject patent.
- Conducting search queries for patent and non-patent citations in search databases (both paid and open): This includes looking up prior art (both patent and non-patent) in databases such as Questel Orbit/Thompson Innovation, Lexis Nexis (Total Patents), Google Patents, Google Scholar, IEEE Xplore, and others.
Requirement/ Necessity for the Search
This search is required to determine whether a patent is novel or non-obvious during the life of the patent/patent term. The need for this search arises from the fact that the examiner may miss some of the potential prior arts due to non-specific reasons such as time constraints, a backlog of applications, non-availability, and so on.
The following are the reasons why an entity or person conducts a search for invalidation:
- Advantages of Protecting Against Patent Infringement
In this scenario, the search is carried out by an entity in order to protect itself from a patent infringement case. The entity, also known as the defendant, attempts to search for prior art that reveals the claims limitation. The entity seeks prior art (both patent and non-patent) that will invalidate the concerned claims of infringement and protect itself from monetary losses in a patent infringement lawsuit.
Consider a company ‘A’ that has filed an infringement lawsuit against a company ‘B’ for using its patented technology without notifying or licensing it from company ‘A.’
In this case, company “B” will conduct a patent validity/invalidity search in order to defend itself against the infringement lawsuit filed by company “A.” The company “B” will attempt to invalidate the claims of infringement of company “A”‘s patented technology in order to protect itself from the losses that may result from the infringement lawsuit.
- Patent Strength Analysis for Licensing Opportunity Benefits
In this scenario, an entity conducts a search to validate the claims of a subject patent that has been enforced in order to analyze its strength and value to assess its commercial benefits. If the patent is valid for novelty and non-obvious patent criteria, this allows the entity to monetize the enforced patent for licensing benefits.
For example, consider a company that wishes to extend its product or service portfolio by acquiring or merging with a second company that possesses a patented technology in which the first company is interested.
In this case, the first company will carry out a patent invalidity search to determine the validity of the second company’s patents in which it is interested. Company “A” will attempt to validate Company “B”‘s patent claims based on the criteria of novelty and non-obviousness.
If the patent claims are genuine in terms of novelty and non-obviousness, company “A” can invest in licensing opportunities with company “B.”
Why Patent Invalidity Search?
Invalidation search comes in handy in a variety of situations, as detailed below:
- Litigations: If a product is the subject of a lawsuit or litigation, this means that if a plaintiff files a case against one’s product based on a patent owned by the plaintiff, one can try to invalidate that patent, and if that patent is invalidated, the litigation will be rendered ineffective. This could save you millions of dollars.
- Petitions: IPR (Inter Partes Review) and PGR (Post Grant Review) petitions can be filed against a granted patent before the PTAB (Patent Trial and Appeal Board) to invalidate the patent or its claims. These trials are filed on a variety of grounds, including the submission of prior art. The applicant can conduct an invalidation search of the patent against which the trial is to be filed to find this prior-art for submission in these trials. The main reasons for filing these are, for example, if a person is working in a technology area and a direct competitor company is granted a patent in a similar domain of invention, in order to gain a strong hold in the technology field, they try to invalidate the patent by filing an IPR or a PGR. Also, if you want to launch a product that would infringe the claims of a patent, an IPR or a PGR can be filed.
- Validation: If a company or assignee wants to strengthen their own portfolio, they must know the value of their patents. Therefore, they try to validate their own patents, and the patent goes through a validation search process, also known as a validity search. Second, when a company wants to acquire another company’s intellectual property, they have their patents validated.
Patent Invalidity Search Report
The patent invalidity search report, also known as the patent invalidation search report or prior art search report, is an analysis of various references discovered during an invalidation search that can be used to invalidate a patent.
What is Patent Invalidation Search?
When a specific assignee or company (plaintiff) has a patent, or a few sets of patents, that they believe are being infringed by a second company in the form of a product or service that is being used commercially and earning a profit from the same, the company, inventor, or assignee (plaintiff) files a lawsuit against the other company (defendant) that is using, commercializing, and profiting from their patented invention.
The defendant now has two options: settle the case by paying royalties to the plaintiff (whose patents are being infringed upon); or fight the plaintiff and prove that their product is not similar to the patented invention.
In another situation, the plaintiff’s entire case may be dismissed if the patent in question is invalid or should not have existed in the first place. Yes, you read that correctly. If prior art exists prior to the filing date of the patent, it can be nullified, killed, invalidated, or disabled.
Thus, if the defendants demonstrate that the infringed patent can be disabled or invalidated, they will not be required to pay royalties to the plaintiff, even if their product is similar.
As a result, the defendant has the patent in question researched by expert individuals or organizations such as XLSCOUT in order to identify prior art that can be used to invalidate the patent.
How to do Patent Invalidity Search?
So, when organizations like XLSCOUT receive a case in which the client provides a subject patent to be invalidated, they assign a team to search various databases for promising arts.
The search involves several steps, which are discussed in detail in other pieces of this article. In general, a patent and non-patent search is conducted to identify prior art published or filed prior to the filing date of the subject patent under the various jurisdictional laws under consideration.
Each jurisdiction has its own set of laws, such as US laws, EP laws, and so on, that determine whether or not prior art can be utilized to invalidate a patent. As a result, when conducting an invalidation search, the searcher must be well-versed in these laws.
Patent Invalidation Search Report
Once a searcher has nearly exhausted the search budget and has conducted extensive invalidation patent and non-patent searches on a subject patent (patent to be invalidated), they shortlist a small number of citations that could be used against the subject patent.
Each shortlisted citation is thoroughly examined in terms of subject matter and credibility. To invalidate a patent, the invention must fall under the laws established by various jurisdictions, such as US laws and EP laws. If the subject patent is from the United States, USC 102 laws must be considered when analyzing prior art.
Before analyzing or mapping the prior art in detail, a few parameters must be checked. Date criteria, previous assignments or reassignments, assignee, inventors, priority country, jurisdiction, and so on are examples of these parameters.
The shortlisted identification of search, best prior arts, and detailed mapping are aligned after in-depth analysis. The patent invalidation search report includes a thorough analysis of best prior art in relation to the claims of the subject patent (independent, dependent, or both). The patent invalidation search report assists clients in better understanding the identified prior arts in detail or the reasoning behind how they can be useful.
Depending on the budget, client requirements, and expectations, different types of search report formats can be used to provide the prior art to the client.
Search Summary Report
A simple search summary report is an option if your search budget is limited or if the client simply wants you to provide a simple layout indicating the identification. In this report format, searchers focus on providing identified citations with relevant text and a brief searcher’s comment that assists the client in better understanding the searcher’s mindset or motivation for providing those citations.
The best citations include relevant excerpts, bibliographic information, and the searcher’s comment. The pertinent excerpts may be highlighted in bold to map the prior art against the claim elements of the subject patent.
In addition to the search summary report (word/excel/PDF format), the PDF copies of the mapped citations (provided in a zip folder) may be highlighted.
This type of report is brief and simple to create. It also takes up less time, which the searcher can use to conduct the search.
Claim Charted Report
If the client requests a detailed analysis of the prior art discovered during the invalidation search, these prior arts are offered by mapping relevant excerpts against every other claim element of the patent to be invalidated.
This report consists of a table with two columns. Subject patent claim elements are organised on the left side according to the key aspects of the claim and for all claims that must be invalidated. Each prior art, on the other hand, is mapped with respect to each key aspect.
For each element, relevant excerpts from the identified prior art corresponding to a specific key aspect are placed. This also includes brief bibliographic details of the identified prior art, as well as a general searcher’s comment that provides a summary of the identified prior art.
Furthermore, for each key element, a searcher’s comment is added that describes the searcher’s mind-set behind that mapping and, if there is any inference, it is clarified so that clients can understand the claim charts from the searcher’s perspective.