Technology globalisation has turned corporate setups into a fiercely competitive ecosystem. Organisations in this ecosystem rely on ongoing technological advancements to stay in the race of giving the most outstanding technical solutions to users at the lowest prices while making the most profit. However, these rapid technological advancements are accompanied by significant capital investment, which is frequently uncertain. Due to their financial strength, large organisations can afford to incur such massive costs. Organisations with limited financial resources are left behind in this ecosystem. Their chances of survival are thin to none if they fail to produce a better product at a lower cost with higher profits. This is where an invalidity search can help. An invalidity search identifies patent and non-patent documents that may have an impact on a patent’s claims. This can assist in blocking patents and solidifying a patent portfolio, which can be helpful for licencing or company acquisition.

What is patent invalidity?

The goal of Patent Invalidation is to invalidate or revoke previously registered/granted patent claims or to oppose claims in a published patent application before they are granted. It is typically conducted to confirm a patent’s claims or invalidate a competitor’s patent claims. It is a tool that any organisation or individual can employ to reduce their competitor’s technological superiority by invalidating their patents. Invalidity search not only keeps track of your competitors’ technological achievements but also help you reduce the number of patents that could hurt your technological dominance and, as a result, your revenue-generating potential.

What are the use cases of patent invalidity?

The invalidity search is helpful in infringement suits, patent portfolio evaluations, and business competition kills. It is one of the crucial factors which determines the fate of the patent in question.

Patent Infringement: Inter Partes Review (IPR), or Post Grant Review (PGR), is a mini-trial heard before the USPTO’s Patent and Trial Appeal Board (PTAB) to invalidate individual claims of a patent based on prior art. When faced with patent infringement litigation, one of the first procedures is to conduct a patent invalidity search. Patent invalidity searches are also carried out to investigate a patent’s strength and explore future licencing possibilities.

Patent Prosecution: The most frequent and successful defence approach in patent prosecution is patent invalidity based on §102 and §103 prior art issues. The alleged party (the one accused of patent infringement) might use the invalidity search to invalidate or cancel the patent in question, making the allegation of infringement null and void. Invalidity searches can assist in invalidating patent claims by demonstrating that they are not novel or obvious, fall under legislative exclusions, or give sufficient evidence of prior art. The patent in question will be revoked as a result.

Patent Invalidation as a Tool: An invalidity or validity search can be used to determine the patents’ strength. The strength of a patent is established by an invalidity search report declaring that the claims of the invention are innovative, non-obvious, and do not fall under any statutory exception of patents. This increases the patent’s value. The most significant evidence of a patent’s strength is a patent grant certificate accompanied by an invalidity search report declaring that the invention’s claims are innovative and non-obvious.

Clearing the Competitive Field: A patent invalidation search is a powerful tool when reducing the value of rivals’ patents. Invalidity searches determine not only whether a granted patent’s claims are non-novel and obvious but also whether it falls within the scope of statutory exceptions for the patent grant, such as if the invention was already in use, available for sale, or was made public more than twelve months before filing the patent application, or if the patent was obtained illegally or fraudulently.

Patent Portfolio Evaluation: The primary goal here is to find prior arts and facts that the Patent Office neglected during the prosecution of the invention, which has the ability to destroy competitors’ issued patents, clearing the competitive business field. Not only may an invalidity search help you weaken your competitor’s patent, but it can also help you strengthen your own by proving its uniqueness and non-obviousness. As a result, the patent portfolio gains value.

What are the common mistakes in patent invalidity searches?

Often, people tend to make inevitable mistakes which often lead to disastrous consequences in the long run! The following are the most common prior art search errors that might jeopardise PGR and IPR petitions:

  • A faulty interpretation of the patent subject matter.
  • Missing NPL References Prior Art Search.
  • Incorrectly Constructed Claims.
  • Improper Use of Prior Art Search Tools.
  • Reliance on just the Claims of a Prior Art Patent.

It is compelling to have a precise comprehension of the technicalities. Claim interpretation is a crucial aspect of a validity search. Because validity searches are conducted on patents that have already been assessed and granted, a broad interpretation of the claims that have been granted is required to uncover other relevant art. At the start of the search, a thorough reading of the file wrapper and prosecution history may aid in a clear interpretation of the claim(s) that need to be disproved. Every patent infringement study and patent invalidity report should be backed by the commitment to go deeper into the technology and articulate the findings as needed. All deliverables should be tracked and subjected to various quality reviews to avoid surprises later in the campaign. One must make sure that the claim charts are detailed and explain complex subjects with simple expert comments and analysis.

Conclusion: Invalidity searches are used to make a lot of crucial business choices. If prior art is overlooked, organisations could lose millions of dollars in patent infringement lawsuits or product development expenditures. As a result, wherever possible, we strongly recommend seeking expert guidance and services in utilising resources and establishing plans that prove fruitful. All in all, a comprehensive approach is required to proceed accurately without committing any mistakes. Knowing when to stop is one of the most crucial aspects because all projects have financial and time restrictions, invalidity searches cannot be carried on endlessly. As a result, the searcher must be aware of these limitations and devise search tactics accordingly.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

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    Abhishek is an intellectual property Attorney. He specializes in the registration and maintenance of patents, designs, trademarks, and copyrights. He regularly assists companies in relation to crucial technology issues. He also helps organizations or individuals to develop patent portfolio management strategies for exciting new inventions and processes. Abhishek has past work experience with reputed firms like SaiKrishna and Associates Advocates, L.S. Davar and Co., Masilamani Law Partners, and Ripple IP Services (NCR).