Patent Validity / Invalidity Search

The purpose of a validity search or an invalidity search/opposition search is to understand the strength of a patent, i.e., whether or not the patent is defendable in a court if litigation arises. Such a search is done for several reasons to understand the strength of a patent that you are planning to acquire, to understand if a patent standing in your way is really defensible, to protect your own position in case someone has accused you of infringement, and so on. Doing a validity search would give you a strategic advantage over the competition.

SciTech Patent Art’s scientists are experts in conducting invalidity searches/validity searches. We bring both technical expertise and knowledge of databases/tools. Invalidity and validity searches require the use of experts who have extensive search experience, are familiar with patent laws, and are well-versed in technical interpretation. You can rely on our team of experts to attend to your project and assist you in finding a solution to some of the most difficult IP challenges. SciTech Patent Art has received commendations from many clients over the years for finding precise prior art. SciTech Patent Art scientists have also received accolades in global search competitions for their search skills.

Our Methodology for a Patent Validity/ Invalidity Search:

SciTech Patent Art adopts a unique and unconventional process towards invalidation searches that involves human experts and is powered by Deep Web & AI / ML tools. Searches for invalidity and validity are primarily concerned with finding prior art that was not retrieved by patent examiners during prosecution using conventional search techniques. In order to identify relevant prior art, various sources of information are searched, such as patents, scientific literature, product specifications, and other publicly available sources.

The conventional approach includes keyword searches, classification searches, author/inventor name searches, and citation searches. Conventional approaches that cover all data sources generally result in several references if an in-depth search is conducted.

In order to find the most compelling prior art, various sources of information are searched, such as patents, scientific literature, product specifications, and other publicly available sources.

The first step involves an analysis of preliminary search results and the searcher’s experience is used to identify pockets of information.
The next step requires to dig deeper into those pockets of information. There are, however, many unindexed or hidden pages that prevent popular search engines from digging into all the pertinent data. At this stage, the use of AI/ML and deep-web solutions is very helpful as they are very efficient at retrieving almost all the required information even from unindexed or hidden pages.

The following are the ways to identify pockets/hot-spots of information:

Identify and search for novel aspect of claims that define the underlaying invention.
Review family patents as an applicant may file patents in multiple jurisdictions of interest
Citation search of patents and non-patent literatures data
Identify specific Universities/ Institutes, companies or authors/ inventors
Comprehensive Deep Web searches with AI/ML and proprietary crawling solutions

SciTech Patent Art has a unique unconventional approach to find compelling invalidating prior art.

An important component of invalidity searches is the interpretation or analysis of the technical content of the prior art. In order to conduct a technical analysis, subject matter experts must have a thorough understanding of the technology in the prior art and be able to compare it to the claimed invention. Scientists and engineers on our team are highly qualified and well-trained and can conduct in-depth technical analyses for you.

Report format of a patent invalidity/ validity search:

Our typical Invalidity search report is in a Word or PowerPoint format that includes:

Project methodology

Outlines the key subject matter of the search and the earliest priority date

Relevant patents

Summary of key prior art references identified in a tabular format
Details of each prior art reference with respect to the technical features highlighted for various sections of the patent document
In addition, technical opinion of our analyst for each of the prior art reference

Search details

Includes the date of search, search period, sources used for the search, keywords, classification codes, citation search and inventor search details included.

Why SciTech Patent Art?

For over 20 years, our team of searchers have been conducting invalidation searches for clients worldwide.
Our teams of searchers comprise subject-matter experts across a wide range of disciplines in science and engineering.
Our searchers are well-versed with patent laws of different jurisdictions.
We have access to multiple patent databases. Furthermore, our proprietary Deep Web search tool provides comprehensive access to a wide variety of NPL data.
Our interactive and tailored work process ensures frequent interactions, and is flexible to change direction as needed.
We provide follow-on services as needed.
We work as per the needs of our client’s timeline, and offer pricing to fit their budget as well.

Related Case Studies

WE WOULD LIKE TO IDENTIFY PRIOR ART FOR A GRANTED PATENT

The client commissioned SPA to find prior art for a patent on the use of a particular organic acid for treating a skin condition.

Client Testimonials

“Dear ABC-san,

Our engineers and zzz-san have completed their review on the final report, and they gained an impression that Ref #1 – 3 could be effectively used to invalidate the target patent by using them collectively. They appreciate your efforts and performance.

Thanks,.”

R&D MANAGER AT A JAPANESE FINE CHEMICALS COMPANY

“The client wanted me to pass along how there was one reference in particular in the report below which you sent last Friday. This one record was of value to the official invalidity arguments they were making against the subject case. Net, just a short note to indicate the report you generated was of value for us to meet our business needs. Job well done and we are thankful for all your hard work to get this project done and meet our
accelerated timing.”

IP MANAGER OF AN AMERICAN CONSUMER PRODUCTS COMPANY

“I heard from yyy-san, who assigned us a prior art search for this patent, that this case was settled through negotiations and the plaintiff withdrew their lawsuit against , and he thinks that they could persuade the plaintiff to lower the settlement money by presenting the references which SPA discovered…”

PATENT ATTORNEY AT A JAPANESE MEDICAL DEVICES COMPANY

“Dear Team,

Thank you very much for your detailed report. It is a really good work, which has grasped the complex issue very well and has presented the state of the art in a very good and clear way.

I have no further questions at the moment”

PATENT ATTORNEY OF A GERMAN LAW FIRM

FAQ

What is a patent invalidity/ validity search?

Patent Invalidity or validity searches or searches are prior art searches conducted after the grant of a patent. Prior art refers to any public information relating to a patent in the public domain that existed before the patent was filed, anywhere in the world, in any language. The term includes both patents and non-patent literature, such as journals, books, encyclopedias, theses, product brochures, and standards. An examiner conducts a thorough prior art search before granting a patent. Hence, the purpose of a validity search is to discover prior art that was not or could not be retrieved by the examiner during the examination, thus, challenging the validity of the granted patent.

When is a patent invalidity search conducted?

Patent Invalidity/ Validity Search is generally conducted in two scenarios:

In the event of accusing a company of patent infringement, the company accused of infringing the patent must prove that the patent is invalid in this case.
When a company wishes to acquire patented technology, a validity search is conducted in order to determine the strength of the patent. A company would like to confirm that if the patent were litigated in the future, it would survive an infringement suit. By doing so, the company is better prepared for negotiations with the patent holder.

What are the challenges involved in conducting a patent invalidity search?

There are a number of databases providing comprehensive coverage of patents from different countries, which are well-indexed and easily searchable. However, the complexity arises as a result of the technical legal nature of these documents and the varying terminology employed during the invention claim process.

In contrast, the non-patent literature tends to be very narrowly focused. Performing a focused search for non-patent data is fairly straightforward. However, there is a great deal of diversity and dispersion in the NPL data. NPL data are not all covered by a single source. So, one needs to search through 100 different sources and yet, there is no guarantee that all sources are covered.

What is the difference between patentability and invalidity search?

While patentability searches are conducted before a patent application is filed to determine whether an invention is new, non-obvious and useful; an invalidity search is performed to find prior art that may invalidate an existing patent, often used in legal disputes or to challenge the validity of a granted patent.
Patentability searches are conducted prior to filing a patent application to assess whether the invention meets the criteria for patentability; while invalidity searches are conducted after a patent has been granted to uncover prior art that can potentially invalidate one or more claims of the granted patent.

Why do we do invalidation search?

Invalidation searches are used to determine if a patent’s claims are valid. Therefore, prior art searches are conducted to identify relevant prior art that might invalidate a patent. This type of search may be conducted during patent litigation or when a competitor’s patent is being evaluated. A patent validity search can be useful in assessing a patent’s potential strengths and weaknesses by identifying the most relevant prior art.

WHY IS PATENT INVALIDITY SEARCH IMPORTANT?

A Patent Invalidation search is generally conducted in two scenarios –

Patent infringement: When a company faces allegations of patent infringement, one may conduct a patent invalidation search. In this case, the first line of defense for the accused company is to prove that the patent is invalid by identifying most relevant prior art. Therefore, there is no question of patent infringement

Patent portfolio assessment: When a company is interested in buying patented technology or consider in-licensing of a technology, one may conduct a patent invalidation search. The aim of a validity search here is to know how strong the patent is. The company wants to confirm that if the patent is litigated in the future, it should be able to survive (will not get invalidated). This allows the company to be better prepared for a negotiation deal with the patent holder.

What is the difference between prior art search and invalidity search?

A prior art search is conducted to identify existing documents such as patents, publications, or other references). It is useful in assessing the novelty and patentability of an invention or understanding the current state of technology development.

An invalidity search, on the other hand, is performed to find prior art that can be used to challenge the validity of an existing patent. It aims to uncover documents that were not considered during the original patent examination and could potentially render the patent invalid.

In essence, a prior art search is proactive and done before filing a patent, while an invalidity search is reactive and done after a patent has been granted to challenge its validity.