All You Need to Know About Patent Invalidity Search

Patent Invalidity Search
Karan Singh
| Updated: Dec 14, 2021 | Category: Patent

A Patent Invalidity Search is typically performed to authenticate a Patent’s claims or invalidate the competitor’s Patent claims. This search is generally one of the primary steps taken when tackled with a Patent Infringement Suit. Invalidity Searches of Patent are also carried out to help with examining the Patent’s strength while exploring capable licensing opportunities. This search is different from a regular Prior Art Search because the comprehensive idea or invention is not the point of the search. Instead, a Patent Invalidity Search focuses on the claim language used.

The primary purpose behind this type of search is to look in the domain to find the noteworthy Prior Art that has been formerly missed by the examiner of Patent. The process of this search can either provide challenging another person’s Patent or can assist with protection preparation against a Patent Infringement allegation.

What are the Different Types of Patent Invalidity Search?

Patent Invalidity Search is a detailed process of conducting Patent & Non-Patent Literature (NPL) search to recognise the most pertinent Prior Art References. Essentially, there are two different types of Invalidity Searches, and you can check the same below:

  1. Utility Search: Utility Search is only for Utility Patents that safeguard the way of using an article or invention. The security provided by Utility Patent covers the creation of a new & modified process, machine, or product.
  2. Design Search: Design Search comprises Design Patents that predominantly safeguard the visual of an article. A Design patent gets consent when a product has a distinctive surface, ornamentation, and configuration.

Moreover, invalidation search serves different purposes depending on the necessity. A business or company may decide to seek invalidation search from a trusted strategic partner when:

  • Keep an eye on Patent Validity for defensive purposes;
  • Sued for violation of granted Patent claim;
  • To make sure the validity of Patent claims for IP filing & monetisation;
  • To estimate strength & value of a Patent Portfolio to support M&A (Merger & Acquisition);
  • During Pre-Grant or Post-Grant Opposition;
  • While exploring licensing opportunities.

Different Variants of Patent Invalidity Search

Exclusive variants for conducting invalidation searches provide flexibility to businesses in terms of cost, time & jurisdiction coverage. It enables them to address different vital and non-vital conditions. Choosing the correct type of search variant for effective outcomes can optimise the complete process.

Following are different variants of Patent Invalidity Search:

  • Design Invalidity Search Variants: For this search variant, one can choose a search variant based on the time restriction, efforts involved, jurisdiction & budget. The various search variants are:
  • Adequate Search: This search runs in the United States, Europe and for International Design Registrations, and this also uses the English language.
  • International Search: This is the broadest scope of search wherein the process is run in multiple nations accordingly to the jurisdictions of interest.
  • Quick Search: This covers only the US & Europe, basically for search in a single country or jurisdiction.
  • Comprehensive Search: This search is a more particular search that covers Design Registration in more than 25 nations in the English language.
  • Utility Invalidity Search Variants:
  • Search Variant 1: This variant which requires less money & time, comes into effect when we need quick results. It runs in single jurisdiction when around 80% of inventions concerning specified technology is performed in the recognised single jurisdiction only. Moreover, this variant permits the clubbing of NPL Search[1] at nominal fees and runs in the English language.
  • Search Variant 2: This variant conducts enough & thorough searching, which needs enough time. Designed for companies or organisations with a low-medium budget, this Patent Search covers significant jurisdictions worldwide.
  • Search Variant 3: This variant can be conducted when an entire and substantive examination of targeted Patents is required with sufficient turn-around time.
  • Search Variant 4: This search performs a comprehensive & thorough examination of targeted Patents, which requires a reasonable time investment. The special feature of this search is that it includes six languages to make keywords. The Patent Search conducts in native Patent Offices as well, and there is the provision of supplementary search, which is free of cost.
  • Knockout Variant (Worldwide): This variant supports quick & thin Utility Patent Invalidity Search in less turn-around time. It is appropriate for companies that have a low to medium budget. This variant covers more than 100 nations and also leaves space for the addition of NPL.
  • Silver Bullet and Plus Search Variant: This variant comes into use when businesses or companies require discovering in-depth to invalidate a claim. There is no limitation to jurisdictions in this variant. Moreover, it comprises Non-Patent database searching as well.
  • NPL Search Variant: As not all examiners rely on Non-Patent Literature during the process of Patent Prosecution, this search variant often plays an essential role in Utility Patent invalidation searches. These searches require several NPL databases like Science Direct, Springer, etc.
  • Native Search Language Variant: This search variant allows invalidity searches & examination in native languages by corresponding experts & native speakers. It permits the businesses or companies to examine different Patent & Non-Patent documents in native languages such as English, Chinese, Japanese, and Korean.

How can you perform a Patent Invalidity Search?

Before you conduct a Patent Invalidity Search, the first thing should be to create the priority date of the Patent claims. Usually, any disclosures that are publically available before the filing date of the Patent are deemed to be Prior Art. Furthermore, if a Patent application is published after the date of filing the Patent to be invalidated; however, the filing date of the published Patent application is before the filing date of the Patent, then the published Patent application is also classed as Prior Art.

The Patent claims to be invalidated should be examined to determine the first Patent application in the entire family, which reveals all of the limitations in the claims to invalidate the Patent. Usually, the features may be revealed in the Patent applications filed earlier; but, there could be aspects that are only disclosed in the Patent that is to be invalidated. If this is the matter, these features or limitations are classified as an element of the Patent claims; hence, meaning that it can be disputed that the date of priority for such claims should be the date of the filing Patent Registration application to be invalidated.

Conclusion

In the end, it is clear that the Patent Invalidity Search can assist companies or businesses in optimising their overall search process. Moreover, it enables companies to obtain the most effective outcomes in terms of relevant prior arts. Each variant satisfies detailed requirements of the companies as per their time, budget, and goals.

Read our Article:Everything You Need to Know About Patent Term Extension in India

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Karan Singh

A legal writing enthusiast, a wanderer, and a zealous reader. After gaining a lot of knowledge about the diverse legal topics and developing research skills, Karan joined the league of legal content writers to deliver quality-rich blogs.

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