Importance of Patent Invalidity Search

Invalidity search is an exhaustive, extensive prior arts search conducted for a granted patent to ascertain the enforceability’s of the granted patent claims. Prior arts for the invalidity search includes granted patents, published patent applications and non-patent literatures referring to journals, books, academic work, product literature, and internet publication and others. Based on the technical subject of the invention, the search approaches differs.

Patent Invalidity search is also known as Invalidity search, Validity search, Opposition search, Validation search, Invalidation search. Invalidity search is conducted to either validate a patent’s claims or invalidate a competitor’s patent claims. Other reasons for conducting an invalidity search of a patent is for infringement cases, post grant oppositions. Patent validity/invalidity search is conducted to assess a patent’s strength. Another notable reason to conduct patent validity/invalidity search is for analysing and estimating vigour of a patent for licensing, merger or acquisition process.

Invalidity search procedure includes:-

Step-I: Understanding the Patent Subject Matter

This includes the following steps:

1. The technical domain of the innovation.
2. The precise technical problem that the patented innovation solve.
3. What constitutes as inventive step for the patented invention over the prior arts, in terms of means and characteristics?
4. The broad concepts and features outlined in the claims?
5. What constitutes the novelty of the patented invention?

Step-II: Designing an Efficient Search Strategy

This includes the following steps:

1. Finalizing the key features to conduct the search
2. Extracting relevant keywords for search
3. Identifying relevant classification codes
4. Formulating multiple logical search strings
5. Searching for forward and backward citations
6. Searching by inventor/patent assignee.
7. Conducting similarity search and sematic searches
8. Utilizing various patent databases
9. Searching for both non-patent literature (NPL) and patent literature (PL)
10. Limiting the date to prior arts which have publication dates preceding the priority, filing or publication date of the subject patent.

Step-III: Analyzing Search Results

This includes the following steps:

1. Claim mapping of the patented innovation with the prior arts and references mentioning the areas where the claims overlap or differ from the prior arts and references found during search

Step-IV: Preparation of the Report

This includes the following steps:

1. Compiling the search results
2. Including relevant patents and NPL’s
3. Analysis of references
4. File wrapper information
5. Preparing an invalidity search report including all the above mentioned details with claim mapping charts, diagrams.

Abstract: A patent invalidity search is a vital tool for managing and protecting intellectual property effectively. It plays a critical role in litigation defense, competitive strategy, portfolio management, product clearance, innovation, licensing, investment, and regulatory compliance. By conducting thorough invalidity searches, businesses and individuals can make informed decisions, mitigate risks, and strengthen their overall IP Strategy

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Author: Mousumi Banerjee