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Important Things An Attorney Must Share Before A Patent Validity Search

Home / Blog / Freedom to Operate / Important Things An Attorney Must Share Before A Patent Validity Search

Rightly said – a wise decision is a result of wise action. Wise action is the ability to prioritize dilemmas and overcome a specific dilemma. 

A patent validity search is a strategic search that is performed to check the strength of the claims of a patent. The claim of your patent signifies your right over that claimed invention/technology. The claims must pass through multiple rejections, and amendments during an examination in the patent office before being granted. However, killing the claim or disclosing the claimed idea before a priority date of the patent could nullify your rights over your patent even after the patent is granted. Therefore, if you are willing to “acquire a company”, “purchase someone’s patent”, “sue someone” or “commercialize/license the patent”, you must get a patent validity search to check the strength of the patent that you are going to use in future. This will indicate the surviving score of the patent if dragged into a courtroom after being challenged. 

Patent validation and patent invalidation have different purposes although the workflow to perform these searches remain the same. The former is performed to check the strength of the patent while the latter is performed to kill/nullify the patent when challenged in court. For a plaintiff, the patent validity search could be your lifeguard and it helps in making any strategic moves like commercializing/licensing the patent or suing someone. Similarly, for the defendant, a successful patent invalidity search could potentially save you from paying the royalties or taking the license. One may have their reasons for conducting these searches. 

With sufficient information, it is easier to connect the dots and play the technical or legal game. Therefore, sharing just a patent number with a search firm to perform the validity or invalidity search doesn’t always flip the coin on your side. Along with the patent number, some additional information from the client could help a researcher to customize their search workflow and help identify useful or relevant results quickly. 

Being the world’s leading IP service provider, we work on multiple validity and invalidity searches on myriad of technologies in our day-to-day life. Based on the thousands of search cases and past events, we have identified some pointers that clients should share with their search firms to get the desired output. Let us provide brief information about those pointers below: 

  1. Motive of the search 
  2. Claims priority 
  3. Necessary claims elements (if any) 
  4. Already identified prior-arts/leads 
  5. Important Assignee (if any) 
  6. Other general requirements such as considering/ignoring backward citations, report formats, etc. 

Table of Contents

Motive of the search 

The motive of the validity search could be just checking the strength of the patent and not always invalidating it. The end objective for checking the strength could be monetizing/selling the patent, acquiring a company and thus its patent, suing someone or if the product faces a potential threat from the patent, etc.  

The motive of the search helps the researcher to understand the expectations from the search and thus regulate the search to obtain the desired result. Let us provide you with some thought process that goes into the researcher’s mind while working on searches for different motives: 

  • When the product faces a potential threat from another’s patent: Suppose you have a product A to launch in a market, before launching the product, you asked your search firm to perform a Freedom-to-Operate (FTO) search. Let’s say, from the FTO search, you came across five potential patents on which your product may overlap/infringe. What is the futuristic approach you have now? You may take the patent license or purchase the patent, or you may get the validity search against those five patents to check if they withstand the validity. 
    Therefore, the researchers working for this cause understand the gravity of the situation and thus perform the validity search of the patents identified in the FTO search considering the broad as well as a narrow interpretation of the claims of the patent. 
  • Acquiring a company and thus its patents: Well! Quality patents play a vital role in a company’s valuation. Quality patents are those having less likelihood of getting invalidated upon performing a validity search. Acquiring the company without validating its patent could be a dangerous move. It has been observed through the experiments that the researchers working for this motive seem to have a broad interpretation of the claims. 
  • Suing Someone: When the patent owner brings the matter to the court, the purpose involved here is, to cease the product, get royalties or a license agreement, and therefore monetary involvement in this action is Huge. The first step for the defendants is to go for an invalidation process and if the defendant manages to get a good prior-art, the patent is invalidated or nullified. Therefore, the researchers working for this motive perform a rigorous validation search and interpret the claim elements to their narrowest and broadest level considering the Markman Hearing concept. A similar thought process is present when the researcher works on other motives such as monetizing/selling the patent. 

Claims Priority 

It is observed that choosing the broadest claim of the patent to perform the validity search has been like a thumb-rule for a patent researcher. They tend to begin with the broadest claim if no specific/required claim is provided by the client. However, picking the broadest claim may not always turn the coin in your favor, sometimes it backfires. Here, the search firm should also be proactive to ask for claims priority if not provided by the client. 

Necessary claims elements (if any) 

Providing such information is like heading one step closer to the output/result. The information about the necessary claim elements helps the researcher to perform a more targeted search and produces more results towards the targeted concept. Further, it allows the researchers to understand the broadness/narrowness of the technical interpretation of the claim elements of the patent. 

Already identified prior-arts/leads 

While initiating the search from the scratch, the researcher must look in all possible directions to locate any useful/relevant results. However, if the client knows any existing or already identified prior-arts/leads, it’s always better to move to bring the prior-arts/leads into the researcher’s knowledge. This will avoid duplicity of the results, and save time, and resources, as this information helps the researchers to perform a dedicated directional search to identify the closest prior-art more quickly. 

With this information, we have an added advantage to identifying the best art through our AI-based tool XLSCOUT. 

Important Assignee/companies (if any) 

If the client has any prior idea about any assignee/company working (or having any working history) in the similar technology domains as the subject patent, it’s always better to bring such information into the researcher’s knowledge. 

Numerous times, we have encountered an instance where the client has provided us an assignees names and we have tracked them to obtain any pre-published product (if any) or prominent inventors who had worked on the same/similar technology, and then we have successfully identified research papers/patents by tracking the past work of those inventors. 

Other general requirements such as considering/ignoring backward citations, report formats, etc.

Considering or ignoring the backward citations is subject to clients’ requirements. If the client already knows and has evaluated the backward citations, then they may simply ask the search firm to ignore the backward citations and utilize the saved time and resources for searching other unturned areas. 

Important Note: Backward citations can still be used again to invalidate a patent in combination (103 prior-art, for US patents) or alone (102 prior-art, for US patents) if it is sufficient to disclose the limitations of the claims from different interpretations that have already been discussed during the examination. 

Further, conveying the usable report format requirements with the search firm can save the client a great deal of time. 

Conclusion

The hunt for useful or relevant results is the prime objective of any search i.e., validity or invalidity, and thus the above-provided pointers could help your search firm or researchers to be a step ahead toward a good result. However, we strongly believe that the good search firm also has an equal responsibility to ask for the above pointers from the client if they have not been provided earlier. It has been observed that good client engagement leads to better search quality. 

Note: The above-mentioned pointers are some of the major exemplary pointers, however, the list is non-comprehensive and many more could be added to it. 

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