Patent Invalidation Search

Home / Patent Invalidation Search
Standard Essential Patents

Patent Invalidation

A patent Invalidity Search or opposition search or prior-art search is performed to determine any patent or non-patent documents which challenges the novelty and inventiveness of a patent in question. This search is performed to identify documents predating the earliest filing date of the patent. 

The main aim of the invalidity search is to unearth conventional wisdom that was likely overlooked by the examiner, which may potentially question the novelty or non-obviousness or inventiveness of the patent. 

This search is performed on claims of the patent in question to invalidate or render obvious the claims of the patent. It is performed generally to settle a lawsuit by rendering obvious the claims of the patent thus nullifying the underlying base of the invention, based on which the lawsuit was filed.

When search is performed to check validity of the claims, it is called as a validity or validation search.

Further, we have our in-house Patent Invalidator tool from XLSCOUT for performing a first pass search.

 

Challenges Faced While Conducting Patent Invalidation Search

Non-availability of freely accessible patents and/or pending patent applications.

No integration with recent AL & ML-based analysis technologies_

No integration with recent AI & ML-based analysis technologies.

As large set of data is to be analysed, so a well-structured approach is needed._

Very large volume of already published documents.

Complete manual search & analysis resulting in a higher cost of review.

Reliability issues with the machine translated text obtained from the Native Language Patents _

Little knowledge of patent laws of different countries.

Dispersed & paid patent search platforms (XLSCOUT, Derwent Innovations, Questel Orbit, PatSnap, PatBase)

Our Services

Exhaustive Patent and Non-Patent Searching​

We provide a thorough investigation of prior arts such as patents, research papers, products on different paid/non-paid/our own proprietary databases.​

Claim Chart Preparation for Invalidating the claims​

We assist clients in preparing a solid claim chart that entails a thorough mapping of claims to the identified prior art. 

Our domain experts create strong claim charts to ascertain the overlap of the identified prior art  technology with the patented subject matter. 

Standard Searching​

Our expert team assists clients in finding relevant standards that may potentially invalidate the claim of the patent in question in addition to normal patent as well as non-patent searching.

We also have our in-house standard searching tool from XLPAT/XLSCOUT. 

Native Language Searching​

Apart from English language searching, we have a team of experts capable of formulating queries and performing searching in native languages including but not limited to Korean, Chinese, Taiwanese and so on native databases KIPRIS, J-PLATPAT, TIPO, CNIPA, ETC.

FAQ

Our Methodology

Patent Invalidation

The main aim of the invalidity search is to unearth conventional wisdom that was likely overlooked by the examiner, which may potentially question the novelty or non-obviousness or inventiveness of the patent. ​

understand icon
AnalyseтАЛ
mitigate icon

Understand

Analyze

Mitigate

Our Methodology

  • Highlighting the list of potential resources for creating collaboration through licensing and buying

    An assigned team goes through subject patent, file history and client instructions to understand client requirements for the search (i.e., format of report, asserted claims, etc) and novelty elements. ​

  • Perform a first-pass search on in-house XLSCOUT Patent Invalidator+ Tool.​

  • Regional database coverage for native language search _

    The team will then search on different paid and free databases for patent and non-patent literature by formulating various queries.​

  • Understand your product portfolio and identify relevant portfolio of focus

    Conduct prior art search in native languages as well such as Chinese, Japanese, Korean, etc. ​

  • Customised Analytics and interactive charts based on taxonomy and geographical distribution

    Identify prior arts that cover all the claim elements and satisfy cut-off date criteria.​

  • Prepare a report as per client requirement and allotted budget hours (summary, claim charted).​

Why TT Consultants?

Image based search and Native search provision

In-house knowledge/keywords Database (Technical Corpus)

Internal tools to make large PDFs searchable with proximity operators​

XLSCOUT Patent Invalidator+ Tool – AI & ML Driven First Cut Analysis​

Blend of Human & Machine Intelligence - Use of BERT, ML & etc. in initial screening of results

In-house developed Standard Search tool for better searching within long documents

In-house video search tool which extracts all the relevant videos, scrapes the captions & makes it searchable in limited time

Experienced Team comprising Ph.D. holders, Indian Patent Agents and Masters degree holders from reputed universities having expertise in core domain.​

Clients Testimonials

+
Quality Projects Executed
+
Years of Experience
+
COUNTRIES

Impact Stories

Blogs

Blogs on Patent Invalidation

Get the Latest Technology Insights with our Industry Focused Blogs

IN THE NEWS

FAQs

An invalidity search is performed to examine whether a subject patent is novel or non-obvious to a person skilled in the art.​

The invalidity search gives protection to an entity involved in patent infringement lawsuit (defendant), by invalidating the claims of interest of the concerned patent of a party that filed a case or lawsuit (plaintiff)​.

When the search is performed to check the validity of the claims, it is called as a validity or validation search. The steps of performing a validity search as well as an invalidity search are more or less similar. The only difference lies in the fact that which party is interested in getting the search done. 

  • Invalidity search is generally requested by an alleged infringer to get away with the infringement lawsuit. 
  • On the other hand, validity search is requested by a patent holder to check validity of the claims .

  • Defendant - When a patent holder (plaintiff) files an infringement suit against a competitor (Defendant) in the court of law for unauthorized usage of his protected invention, the defendant resorts to invalidity search to render the claims invalid. Once the grant is declared invalid, there will be no infringement suit. 
  • Patent Holder - A validity search may be sought by a patent holder to check validity of the claims before suing an alleged infringer. If no satisfactory prior art is identified during the search, the claims of the subject patent are assumed to be novel, non-obvious and have an inventive step.
  • Potential licensor - Validity search can be performed on behalf of a potential licensor interested in licensing the invention. The interested party (licensor) would need license from the patent holder to manufacture or sell the products disclosing the claimed invention. Thus, before investing a huge amount of money and time in the process of licensing, the potential licensor requests a validity search.
  • Merger and Acquisition - When a company ‘A’ is interested in acquiring another company ‘B’ in order to take hold of the IP owned by company B, company ‘A’ generally requests a validity search on the patent portfolio to determine the strength of the patents. 

The prior art may be made on many elements including patents, published patent applications, and non-patent literature. Non-Patent literature may include books, evidence of sale or usage, videos, technical standards, white papers, journals, physical forms, and online resources.​

It simply indicates that your invention is not unique and has already been filed.​

Various factors are taken into consideration to decide the cost of an invalidity search.

  • Level of Complexity of inventions  
  • Client budget, timeline, requirements, and expectations
  • Search report format opted by the client (summary type report or detailed claim charted format)
  • Scope of the search – when along with patent and non-patent search, the team is also performing jurisdiction based search in native languages, or standard based search where various IEEE, 3GPP, ITSE standard are also searched.

FAQ

Related Services

Patent Portfolio Commercialization

Patent Infringement Search

Patent Portfolio Optimization

TOP

Request a Call Back!

Thank you for your interest in TT Consultants. Please fill out the form and we will contact you shortly