Patent Invalidation Process – Transforming Our Techniques

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Patent Invalidation Search is extensive prior art search that involves executing a thorough patent and non-patent literature search. The Invalidation Search is usually conducted to invalidate the claims of the patent, so the whole purpose of the search is to locate a significant prior art that the examiner might have missed during prosecution. To pull the search in the right direction, a complete understanding of the patent, its claims, and file wrapper is essential. Knowing the scope of the invention also helps in effective execution of the search.

Invalidation Searches are often challenging because sometimes the domain is as deep as the ocean and the search is time-bound be sometimes bounded by a very short deadline So, there comes desperate times when we here at TT Consultants take desperate measures by implementing unorthodox approaches for locating the significant prior arts 

We came across few cases in the past where the conventional approaches failed or there were time constraints, so we followed unconventional methods and cracked some of our toughest cases.

#1  Uncovered a Relevant Prior Art through File Wrapper Analysis of cited documents: 

It is often said in the medical domain that if you want to treat a patient you need to know the history of the patient for an accurate evaluation’s does in IPR.

The information such as rejections, applicant arguments, claim amendments, notice of allowance, etc. which are presented in file-history of a patent includes lot of valuable information, which provides great help during the search. We here at TT Consultants believe that a clear understanding of an invention’s story is at the heart of the successful execution my search. 

Few days back, we received a quick invalidation search request where the client was chasing a very short deadline. We just got a two-days and there was a deep dive to take as the domain was very vast. The team was initially a little nervous because deadline was too short. In such cases Time is Money, and we must spend it wisely. 

We started reading the patent and obtained decent understanding quickly, then we jumped to the file wrapper and during analysis we came across a pretty-strong rejection having quiet similar claim elements as that of subject patent but missing exact novelty of the subject patent explicitly. The next standard approach would be checking the backward and forward citations of that cited reference, but the count of backward and forward citations was huge, and optimization of hits leaves a chance of missing a result.  

There we decided for opting a path which should be less time consuming, so we had short a discussion with our mentor, and we came up with a solution of analyzing the file wrapper of the patent (having quite similar claim-elements but missing exact novelty) that was cited in the rejection. This was definitely a short road having high probability of leading us to our destination.  

We analyzed the file wrapper of that cited patent and there was a moment of triumph because e a pretty good prior-art was just waiting for us to be fetched as it was disclosing the novelty. Definitely, we would have located this prior art with the conventional methods but that was along the curve to follow, so instead, we took a straight path and were able to identify a killer prior art in quite a short time. When we already have a good prior-art in hand in very little time, it boosts your confidence which certainly enhances the quality of the project.  

We smoothly identified other promising arts also as there was neither pressure nor time constraint. We pulled off that project really well and were able to break the whole independent claim. The client really liked the work, he appreciated us verbally as well as gave us a good rating in email. 

Patent Invalidation Process - Flow Chart - TT Consultants
Patent Invalidation Process - Flow Chart - TT Consultants

Note: Every project processed on a different work flow depending on the nature of the project.

#2  Located a Bang-On prior art by analyzing file wrapper of family member of subject patent:

We here at TT Consultants always believe in delivering the best quality to our client’s despite of all the challenges and hurdles thrown at our plate. As Research Analysts & Consultants we always believe no matter how tough or complicated the invention is or how vast the domain is, we here at TT Consultants love to turn the table around and face these challenges with open heart. 

There are times when things get tougher, those are the times when client comes with a very tough invention along with a with a very short deadline. We often come across such cases, and the one I am going to talk about is just of a same kind. We started the search after gaining understanding of subject patent and as always, we moved to the US prosecution history for performing file wrapper analysis. We found nothing valuable in its prosecution history, just a very broad rejection. So, there were conventional approaches in front of us like making database queries, analyzing huge set of forward and backward citations of subject patent and its family members.  

But we preferred to take a different road, which was less time consuming and was worth giving a chance. The subject patent had 40+ INPADOC family members, so instead of performing citation analysis of all the members we quickly scanned all the members on database and found one JP-counterpart as an INPADOC family member whose title and claim elements were almost overlapping.  Then we decided to extract the file wrapper of JP counterpart but there comes another hurdle in front of us and that was language barrier, as file wrapper was not in English. So, we consulted in-house native country employee in order to translate the document, after translation we analyzed it. 

Here the road we picked, took us to the destination we were longing for. There was a very promising art mentioned in the file history of JP-counterpart, which was breaking all the features of the independent of our US subject patent. We extracted the text, prepared the claim chart and send it to the client in the interim update. The client was really impressed because, he was not expecting the interim update this early along with such good art. He appreciated us a lot as he was chasing a really short deadline. When we try something new, and it turns out to be fruitful this is an achievement of its kind. We always believe in exploring new ideas and methods because trying new either rewards you with success or gives you a learning, there is no such thing as a failure. 

#3  Found a Knockout Prior Art through Reverse Engineering: 

We received a prior art request from US based attorney related to Graphical User Interface. An old client recommended us to him, so he had high hopes in us. We were already on the edge of our seats and were ready to give our best like always. We started the analysis by implementing conventional approaches. 

Considering the novel element of the independent claim into focus, we extracted the keywords, classes, assignees and inventors and formed queries. Despite of all these efforts, we were still not able to find any relevant art. So, this was the point where team was little divested but as it is said use your pain as fuel and keep going”.  

We decided to have a discussion and came up with a decision to check all the shortlisted results we found with conventional methods. During rechecking we found one specific assignee was very active in the related technology, but we could not find any relevant art despite of using that assignee in our database queries. So, we decided to dig down the products of that company related to the technology that we were searching for. After performing hours of exhaustive search, we found a product overlapping with features of the claim. We found the launch date of the product and it was before the priority date of the patent. At this moment, the destination was just in front of us, just to land there was left. We downloaded the application/product in the phone and tested all the features. Then we found the product documentation, we were able to crack all the features of the independent claim

But we were not done yet, we drafted fresh queries using keywords used in product documentation and successfully landed on a patent of that specific assignee, disclosing all the claim features. 

Then in end, we prepared the claim chart and were able to disclose all the features explicitly. Finally, our hard work paid off as client really appreciated the work.

#4  Identified a Prior art using Way-back-Machine:

Way-back machine is another excellent tool that we use frequently to uncover hidden prior arts. For instance, while working on a crucial project we couldn’t locate all the necessary information in the prior patent publications that was needed to invalidate the independent claim. So, we decided to search the relevant product in the domain without applying the data criteria and we extracted all relevant products which were disclosing the similar subject matter. Thereafter, we decided to trace back the origin of the identified products using Way-back-Machine. We dig quite deeper on the Way-back-Machine and analyzed numerous snapshots of each of the product’s e got on the timeline. After, surfing a lot on Way-back-Machine we finally found that one of the identified products was disclosing all claim limitations before the priority date of the patent in question. That being so, we prepared a solid claim chart for the identified product and sent it to the client. client liked the prior a lot and appreciated our efforts. The project taught us sometimes we need push hard when things get difficult. 

Read our new case study blog “Patent Invalidation Process – Exploring the Unexplored” in Biotechnologies”.

Rupinder Kaur
About TTC
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TT Consultants offers a range of efficient, high-quality solutions for your intellectual property management ranging from Patentability SearchInvalidation SearchFTO (Freedom to Operate)Patent Portfolio OptimizationPatent MonitoringPatent Infringement SearchPatent Drafting & Illustrations, and much more. We provide both law firms and corporations in many industries with turnkey solutions.
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