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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.
Non-availability of freely accessible patents and/or pending patent applications.
No integration with recent AI & ML-based analysis technologies.
Very large volume of already published documents.
Complete manual search & analysis resulting in a higher cost of review.
Little knowledge of patent laws of different countries.
Dispersed & paid patent search platforms (XLSCOUT, Derwent Innovations, Questel Orbit, PatSnap, PatBase)
We provide a thorough investigation of prior arts such as patents, research papers, products on different paid/non-paid/our own proprietary databases.
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.
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.
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.
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
Analyze
Mitigate
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.
The team will then search on different paid and free databases for patent and non-patent literature by formulating various queries.
Conduct prior art search in native languages as well such as Chinese, Japanese, Korean, etc.
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).
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
We found an art which they actually are going to use in the trial so it was good. The overall work feedback is good so far, timeline is fantastic and we are at present their go-to firm for all cases.
Client appreciated the work in call. Call was attended by all team members. Based on previous work, client approved an extended budget of 250 hours for all five patents.
Positive feedback over interim report - I’ve taken a look at the most recent update and I am happy with the results so far, I think the team has done a nice job of identifying relevant references.
Client was happy with the search report and also mentioned that you have provided very good references for claim limitation glitch and other related claim limitation(s). Further, he had also given additional search with additional budget hours for other limitation(s).
Thank you very much for the updated interim summary of the invalidity search. The prior art provided in the summary is consistent with the type of art we want to see in the final report, and the format of the summary is good.
Thanks again for your excellent research results and additional explanations which helped us a lot in understanding the patents.
Impact Stories
A client approached us to analyse a competitor portfolio in video encoding/decoding domain with the intention of Portfolio acquisition. We fetched a bucket of the relevant patent set assigned to this competitor and performed a detail portfolio valuation. We analysed the dataset based on length of claim, number of backward and forward citations, number of total claims, number of independent claims, etc and performed patent ranking for the bucketed patents with the help of XLSCOUT patent ranking tool. The final deliverables helped the client in assessing the value of competitor portfolio at large.
A client approached us with invalidity search request for a set of patents. Out of this set, one patent was a real tough nut to crack. We had tried all the possible techniques and approaches but were unable to locate a promising prior art. The only art we could identify in this case was a Chinese patent which was very similar to the claimed invention. Client appreciated how we went that extra mile to perform native searching out of the budget.
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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.
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.