The Process of Patent Invalidation & 5 Ways to Invalidate it

Laying the Groundwork

The Patent Invalidation procedure requires in-depth research into various aspects of the patent before an invalidity claim can be invoked. In order to invalidate a patent, it is imperative to investigate the grounds on which the patent is validated at present. Following are the facets that need to be examined:

1. Duration of Patent Validity:

Know how long a patent is valid helps in determining the utility of undertaking the exercise of invalidation. Most patents are safeguarded from their patent priority date that gives the owner exclusive usage rights and prevents competitors from encroaching. In the United States, design patents are usually granted for 14 years, and utility patents for a period of 20 years. 

2. Premise of Patent Validity:

It is important to understand the points that establish the validity of the patent. in the United States, the USPTO lists below requirements for patentability:

• Statutory, which means that the subject matter of the patent must be eligible per the given guidelines. Processes, machines, manufactured articles, and compositions of matter are some subjects that can be patented, while data structures, laws of nature, books/music etc, are some non-statutory inventions.
• 35 U.S.C. § 102 mandates that an invention must be unique, new, and filed within a year of public disclosure. Failure to adhere to the one-year rule can lead to rejection of a patent. Prior art will also be examined by to investigate previous patents that may be highly similar to the applied patent. In the event that a patent is found to be lacking novelty, the application can be rejected.
• The patent must be useful, i.e., it must have practical utility, operability, and beneficial utility to be valid. Utility patens must serve a predetermined purpose. Plant and Design patents are exempt from this.  
• Non-obviousness is another criterion for patent validity. The invention must be considered non-obvious to a person with ordinary skills. 

5 Ways to Invalidate a Patent

A petitioner seeking to challenge an existing patent may adopt one or a combination of following approaches:

• Known Prior Art: This refers to finding any public disclosures of the patent before the priority date. Such disclosures are referred to as prior art. This is the most common measure to question the validity of the patent. 
• Evidence of Use Prior to Filing: If it can be proven that a patent was in use or publicly available 12 months before filing then it may be reason for invalidation since it then ceases to be an original invention.
• Patent Formation: Examining whether a patent even exists is an often over-looked practice. Checking if the patent was even filed or submitted should be the first step in the quest to invalidate a patent. 
• File Wrapper History: This entails checking of all the guidelines and requirement required to file a patent have been strictly adhered to by the applicant. Any detail that has been skipped can become a cause for invalidation.
•  Inventor’s Oath: An Inventor’s Oath is a legal requirement in the patent filing process that mandates identifying the inventor and joint inventors to be listed in their legal names. All inventors participating in the invention must be listed in the declaration. A delay in filing the Inventor’s Oath or not filing it altogether can lead to patent invalidation.
• Ensuring a Tight Priority Chain: A continuing patent application offers many advantages to the inventor as they can avail patent protection for subject matter that they may have overlooked earlier. But to benefit from this convenience the applicant must stringently follow the claiming priority in the patent filing process. A break in the priority chain can be used as a patent invalidation tactics.

Conclusion

All the findings from the above search/analysis are mapped and compiled to form an Invalidation Report. The entire process is extremely challenging and requires thorough knowledge of all coveted aspects of the patent law. It is best to assign the task to an expert with extensive familiarity on the subject.