How To Strategize A Search When There Is No Prior Art For Invalidation?

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In this realistic world, the best defense against a strong opponent is to evaluate our opponent thoroughly to determine their advantages and our advantages when things are not in our favor.  

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 Well! with the surging technological rivalries between the companies these days, one has to make an emergency call to be ahead in the field of technology and thus “patent”. Today’s companies know the formula of market dominancy is by getting the patents, and not letting anyone use it without authorization. Patent Litigation has just become the game for companies as it offers huge financial rewards when the coin flips in the favor of the patent holder. Contrary, it can cause severe monetary and reputational damage if the patent got invalidated in the court. For this, the petitioner/plaintiff must know their patent’s strength. The patent strength should also be checked before “Patent Licensing Deals”. [As food for knowledge – on average, US court faces 5000-6000 litigation cases every year] 

Being from the intellectual property family, generally, in high-profile litigation cases, we do come across many times where identifying a prior-art bang-on is challenging even after performing many rounds of searches. As rightly said, it’s better to leave the legal game to the legal professionals, and this is where we come from. Our masters and PhDs from specific technical background knows the 0’s and 1’s of patent and holds a remarkable footmark in solving such challenging cases by strategizing an “invalidation search”. The invalidation search is performed to find a perfect prior art e.g., patent literature, non-patent literature, videos, images, etc., that could kill the patent. 

We believe, the good prior art is an outcome of good search queries that we form for different databases. or, what you type what you get, and it’s true. Being experts in using different databases, we make different combinational search queries that include keyword-based, class-based, assignee/inverter-based, keyword & class combination, assignee & class combination, inventor & class, and semantic search – the list is long. And the similar process is followed for non-patent searches too. As different databases have different working algorithms, they may give a different quality of prior arts with the same search query. Thus, using multiple databases for searching is always an added advantage. And this step keeps running on an endless loop for finding a bang-on prior art until we get one. 

Prior-art searching is a matter of patience and an extent up to which one can go to get success. As a patent strategist, I must assure you that we still have the option to find the closest prior art when the above-mentioned strategies fail.  

Let me show you some of the unconventional methods that we have used to turn things in our favor: 

  • Find something good that is published post-date of the subject patent. Wait! Post-date? yes! Once you get one, note down any related terminology/inventor/author/assignee, etc. if available backtrack them before the priority-date of the subject patent. Trust me, it has been helpful.  
  • The file history of previously litigated family members (if available) of the subject may give you the breakthrough. 
  • Sometimes image talks more than words. A thorough analysis of the images of the patents or non-patents can take you close to your requirement. 
  • Have you ever heard of getting a prior art by visiting a university library? As a researcher, we do come across numerous times “one-liner information” that seems useful while searching, however, accessing its complete document or book online is quite difficult. Ignoring such “one-liner information” could be a big mistake. In one of our recent cases, we came across similar “one-liner information” and its complete document was not accessible online. Our team decided to take a step further and visited a library, and this extra step changed the fate of the project. 
  • Understanding the inventor’s background and past inventions in the related field of the subject patent. 
  • Utilization of readily available tear-down & reverse engineering reports to invalidate Circuit/Semiconductor/Software & other Patents 
  • We can obtain a lot of insights from File wrapper analysis i.e.  
  1. Investigation of other patents filed by the applicant of the cited invention. 
  2. Investigation of backward cited patents in the OA stage of the cited invention (= Cited invention of the cited invention). 
  3. Search for patents that deal with (or include) the same technical content as the cited invention. 

Keeping an eagle eye on the screen during the analysis and tweaking the identified prior art in a way to kill the claims or to invalidate the patent is an art that comes with a strong technical background and critical thinking ability. And yes! we are the artist.  

After getting the closest prior art we share our findings with our client in the form of element-to-element mapping that helps our client to have a clear picture between the prior art and the subject patent. 

About TTC

We’ve constantly identified the value of new technology carried out by our pretty skilled executive crew with backgrounds as our professionals. Like the IP professionals we empower, our starvation for development is never-ending. We IMPROVISE, ADAPT, and IMPLEMENT in a strategic manner.

TT Consultants offers a range of efficient, high-quality solutions for your intellectual property management ranging from

and much more. We provide both law firms and corporations in many industries with turnkey solutions.

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