How does one ensure the security of
Patent Invalidation Search
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 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)
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.
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
Analyze
Mitigate
Our Methodology
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).
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.
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FAQs
What is invalidity search?
An invalidity search is performed to examine whether a subject patent is novel or non-obvious to a person skilled in the art.
Why is Patent Invalidity search required?
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).
What is the difference between a validity search and an invalidity search?
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 .
Who should opt for Patent Invalidity/Validity Search?
- 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.
What are the acceptable prior arts for invalidity search?
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.
What happens if there is a prior art for the claimed invention?
It simply indicates that your invention is not unique and has already been filed.
What is the cost of invalidity search?
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.