Patent Invalidation and Validation Search

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 a 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 a validity or validation search.

The steps for performing a validity search and an invalidity search are similar. The only difference lies in the fact that which party is interested in getting the search done.  ​

• An invalidity search is generally requested by an alleged infringer to get away with the infringement lawsuit.   
• On the other hand, a patent validity search is requested by a patent holder to check the 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 an invalidity search to render the claims invalid. Once the grant is declared invalid, there will be no infringement suit.   
• Patent Holder - A patent validity search may be sought by a patent holder to check the 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 - A validity search can be performed on behalf of a potential licensor interested in licensing the invention. The interested party (licensor) would need a 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 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, and ITSE standard are also searched.

A patent invalidity search can be conducted on an international level. Since patents are granted on a country-by-country basis, an international patent invalidity search would involve searching for prior art in multiple countries. However, it is important to note that the scope of the search may be limited by the language skills and resources of the searcher. 

The impact of an invalidity search on the patent owner can be significant. If an invalidity search uncovers prior art that could invalidate the patent, it could lead to a challenge to the patent's validity. This could result in the patent being invalidated or narrowed in scope, potentially limiting the patent owner's ability to enforce their patent rights. Additionally, an invalidity search could be used by potential infringers as a defense in a patent infringement lawsuit, making it more difficult for the patent owner to enforce their rights. 

An invalidity search report typically includes a list of prior art references that were uncovered during the search, along with an analysis of each reference and how it relates to the patent in question. The report may also include an opinion on the patent's validity based on the prior art uncovered during the search. The search report may include various types of prior art, including patents, patent applications, journal articles, conference papers, and other publicly available information that could potentially invalidate the patent. The report may also include information on the search methodology used, the search terms employed, and any limitations or caveats associated with the search.