Invalidity Search
Patent Validity Search Services/Patent Invalidity Search Services
A Patent Invalidity search is conducted to examine the validity of an existing patent. This search is typically conducted in response to a patent infringement allegation or as part of due diligence during mergers and acquisitions.
Typically, in a litigation pertaining to patent infringement, a standard defense is to demonstrate that the Patent itself is invalid. For this purpose, a patent invalidity search is carried out to assess if a patent can be challenged. Advantages of Patent Invalidity Search
An in-depth study for validation or invalidation of a patent can change the dynamics of a lawsuit, drastically affecting the verdict. Patent validity or invalidity search can be conducted to analyze and estimate the validity of a patent for licensing, acquisition, or merger process.
A negative outcome of the search will mean that the concerned patent consists of claims that hold novelty, have inventive steps, and hence, cannot be invalidated. Invalidity Search can have various end objectives, including but not limited to:
- To challenge the validity of a patent
- To avoid heavy licensing fees
- Evaluate the strength of a patent before investing into it
Depending on the turnaround time and end objective of clients, IIPRD offers customizable Invalidity Search options.
A Patent Invalidity search is conducted to examine the validity of an existing patent. This search is typically conducted in response to a patent infringement allegation or as part of due diligence during mergers and acquisitions.
Typically, in a litigation pertaining to patent infringement, a standard defense is to demonstrate that the Patent itself is invalid. For this purpose, a patent invalidity search is carried out to assess if a patent can be challenged. Advantages of Patent Invalidity Search
An in-depth study for validation or invalidation of a patent can change the dynamics of a lawsuit, drastically affecting the verdict. Patent validity or invalidity search can be conducted to analyze and estimate the validity of a patent for licensing, acquisition, or merger process.
A negative outcome of the search will mean that the concerned patent consists of claims that hold novelty, have inventive steps, and hence, cannot be invalidated. Invalidity Search can have various end objectives, including but not limited to:
- To challenge the validity of a patent
- To avoid heavy licensing fees
- Evaluate the strength of a patent before investing into it
Depending on the turnaround time and end objective of clients, IIPRD offers customizable Invalidity Search options.
At IIPRD, Technical Subject Matter Experts evaluate the validity of patents and analyzes prosecution history of the patent to understand the reason for allowance. Our search team is well-equipped with the patent and non-patent literature databases & holds hands-on experience in regional patent office databases as well. With the help of our language translators and offshore collaborations across China, Japan, and Korea, we provide native language search options at minimal cost to uncover regional NPLs that do not usually surface in English language searches.
As a part of the final output, a detailed search report contains an understanding of patented technology and search strings/classifications used to search prior art references. These strategies are formulated and claim charts pertaining to identified prior art references are prepared and shared. Our color-coded claim charts provide a feature-wise analysis of recognized prior arts mapped to the target patent, along with the searcher’s comment(s) against each mapped claim element to help understand the searcher’s thought process and inferences used to establish the facts within the claim charts. A detailed search report containing a feature-wise analysis of potential threats to the patent can help clients in determining the fate of the patent in question.
Steps to perform an Invalidity/Validity Search
Section I- Scope of Search– In a validity search, the focus is on the claims rather than the description of the patent specification, unless a claim term requires interpretation or the scope of the claim needs to be evaluated. While the search is primarily undertaken with respect to the asserted independent claims, dependent claims are also sometimes focused on based on client requirements and the number of claims asserted for infringement by the Plaintiff.
Section II- Conducting Validity and Invalidity Search– An invalidity search is conducted for a party being sued (Defendant). By invalidating the patent that is the subject of a patent litigation, the Defendant aims to avoid paying damages and/or suffering an injunction. However, in some scenarios, in order to evaluate the strength of their patent(s), the Patentee/Assignee may conduct a patent validity search themselves to assess the strength of their portfolio and determine the likelihood that the patent will be held valid during enforcement proceedings if/when a lawsuit arises.
Section III- Steps to perform an Invalidity/Validity Search– The first step is to assign a team specializing in the subject matter of the target patent, who will accurately review the patent to define the scope in view of the prosecution history and estoppel and evaluate the claims to be searched. Understanding a target patent requires thorough knowledge and deep insight into the domain of the invention. Based on the understanding of the subject matter of the patent, a search strategy is formulated which may keywords, a combination of keywords, key non-patent databases, product literature databases, and classifications. Such a search strategy can thereafter be executed considering the priority date of the target patent to identify prior art references that disclose the key elements that led to the patent’s issuance.
After mapping the identified and relevant prior art references to the elements of the target patent, a report is generated and shared with the client in the desired format. This report not only includes the closest-identified citations but also the citations that are highly relevant to the target patent. IIPRD has a team of over 240 professionals across different regions, including search professionals in China, Japan, and Korea, who can work together to conduct deep and thorough validity searches to identify the most relevant references.
3. Nullity Search
A Nullity search is an exhaustive search conducted to invalidate an entire claim set, or a specific embodiment/set of patent claims, aimed at avoiding or addressing an ongoing patent litigation. A nullity search is conducted mostly during a patent infringement proceeding to challenge the claims or rights of a patent for which an infringement suit has been filed in a Civil Court. For conducting a Nullity Search, we assign a team of technical subject matter expert(s) (TSMEs) to the client. These experts not only perform an extensive search to invalidate the claim set but also actively help attorneys in interpreting the claims. Throughout the process, IIPRD professionals are available to assist Patent Attorneys and Litigators with additional searches and to prepare formal documents, technical disclosures, and mapping sheets. We also help with depositions, preparing document requests, preparing requests for admission, and interrogatories, among other similar activities providing support at every stage during the entire process.
Our Approach – (Validity / Invalidity/ Nullity Search for Patent)
At IIPRD, we understand the critical importance of patents from a commercialization perspective and undertake numerous Patent Validity projects to ensure the enforceability of concerned patents to the best of our abilities. We conduct an extensive search of patents, technical publications, and any other documented material that may be relevant to the patented invention. We are passionate about our work and aim to empower the most innovative and advanced entities via our services. Our focus is always aligned with our clients’ needs. We aspire to assist our clients in solving their complex, technology-driven problems by providing insightful strategies for specific implementation. IIPRD has a proven track record of serving Global Clients for Patent Analytics Services in the USA, Japan, Europe, the Middle East, and other regions.