Understanding Patent Invalidation Search

October 13, 2022
- Intellectual Property (IP)
- Patentability Search

In some ways, looking for patents is akin to searching for other types of technical literature, such as articles in popular scientific publications or papers in scholarly and professional journals. However, several features of looking for patents are sufficiently distinct from searching for conventional literature that the activity requires a specialized mentality, method, and approach.
Looking for patents differs from searching for traditional publications in a number of ways, including the nature of the patent documents themselves, how they relate to one another, and the distinctive way that patent databases are built.
The article discusses the psychology of patent searching, including the mindset, ideas, plans, and techniques or tactics as well as challenges faced during the patent invalidation search. Further, the article focuses on the fact that how TT consultants is the best destination for your patent invalidation search or any other type of patent search.

Understanding Patent Invalidation Search

To find the patent and non-patent literature that can thwart an invention’s claims and make them obvious and non-novel, opposition searches or patent invalidation searches are carried out. After a patent has been awarded, a thorough examination of pertinent previous art is known as an invalidity search. Finding relevant prior art that the examiner may have missed and that may render the patent invalid is the major goal of the invalidity search.
The claims of a patent can also be verified via an invalidity search. If a search for invalidity yields negative results, it means that the patent’s claims are unique, innovative, and exempt from the statutory exceptions to patentability. Additionally, it establishes the patent’s solidity and robustness. A robust patent portfolio increases the possibility of revenue creation through licensing and is useful when acquiring a company.

The prior art search that is carried out at the earlier phases of patenting is different from the search for patent invalidation. Instead of focusing on the invention’s broad idea and concept, a patent invalidity search concentrates on the claim language.

Why not just be confined to Keyword search?

If you ask an inventor to explain their invention, he will instinctively use words that describe what the invention accomplishes (it raises the rotational speed of an output shaft relative to that of an input shaft), how it is built (it has a sun gear and planet gears that are positioned on a planet carrier), or even its name. The temptation to limit your search to terms is strong. There are, however, a few traps to be aware of.

The problem with keyword searches is that they could occasionally be unclear. Think about the term “bridge,” for example. Depending on the context, it might mean a number of different things. A bridge is a building that crosses a river or a chasm in the ground. Even then, it might be a road bridge, a canal bridge, or a rail bridge in the style of a via duct (aqueduct). There are several possible bridge designs, including suspension, cantilever, cable-stayed, and box girder.

A bridge can also serve as a stringed instrument’s support, tuning, and tensioning mechanism. Examples include violins, violas, guitars, lutes, etc. A bridge is a type of dental implant that can be used to bridge tooth gaps. An electrical circuit can include a bridge as a component. In addition, it is possible that terminology varies depending on the region. The name “boiler” is used in the field of fossil fuel combustion in Europe, but “furnace” is used in the USA.

Second, especially in chemistry, synonyms are frequently employed. For instance, a chemist can immediately recognize the molecular formula CH3COOH. Its textual equivalents include acetic acid (trivial name), ethanoic acid (systematic name), ethan-1-carboxylic acid, and various aliases. However, a non-scientific person will undoubtedly recognize “vinegar” as a solution of ethan-1-carboxylic acid in dihydrogen monoxide (water).

Thirdly, the drafters frequently use specialized and purposefully obscure terminology, vocabulary, nomenclature, and grammar for the sake of legal certainty, and occasionally, it’s possible to conceal patents from being discovered. A pen might be referred to as a “writing instrument” in a patent application, whereas a tape measure might be referred to as a “linear comparison device.

Consider the inventiveness of the patent writers when choosing keywords. In general, you should be aware that there may be multiple ways to spell a single word when using keywords; “analyze” and “analysis,” for instance. Remember that databases will undoubtedly contain misspelled words. There will be a time when you do want to search for “flourescent” and not “fluorescent,” or for “reciever” and not “receiver,” despite the warnings from the built-in browser spell-checkers.

Additionally, patents are written in a distinct language. Along with the obviously overly complex or specialized technical phrases, patent writers also create new words. Rarely are the words “more than one,” “a few,” or “many” used in patents, but “a plurality” is always used in their place.

Similar to this, new adjectives are created to characterize an invention’s features, such as “slideably” (US20050105855). Additionally, there are apparent inconsistencies, such as “detachably attached” (EP1211368) where a typical author may have written “removable.” The phrase “Device for eliminating stray radiation” in its native language, if translated into English as “Useless radiation preventer,” doesn’t entirely reflect the invention’s intended meaning. Translations can also have unintended repercussions.

Patent Classification

As of now, it is clear that the number of patent publications is enormous and continuously increasing. If there were no indexing or classification system in place to aid in locating the most interesting and pertinent patents, this collection of publications would be impossible to navigate and the knowledge contained inside is unavailable.

The main patent offices have put in place various classification schemes that are acknowledged globally. These classification systems may seem overwhelming to a novice. Imagine walking into a public library as an example. Different stacks with labels like “Science,” “Engineering,” “Art,” “Humanities,” and so forth might be present. Imagine that when you go to the “Science” stack, it is divided into sections for “Physics,” “Chemistry,” “Biology,” “Mathematics,” etc.

You follow the “Physics” aisle because you’re interested in the subject and discover that it has a variety of bookcases. Atomic and molecular physics, “Thermodynamics,” “Magnetism and Electricity,” and so forth. The bookcase labelled “High Energy Particle Physics” has shelves with the headings “Fermions,” “Neutrinos,” “Muons,” etc. You spot the book about the Higgs particle you’ve been hunting for on the “Boson” shelf. The Dewey Decimal system for categorizing books is another categorization scheme that many library patrons may be familiar with.

The hierarchy of patent classifications is similar. Utilizing the ingenuity of the examiners who initially classified patent documents, patent classification is a rapid way to locate pertinent information extremely quickly. There are several classification systems in use, including the Cooperative Patent Classification (CPC) system used by the European Patent Office and the United States Patent and Trademark Office as well as the International Patent Classification System (IPC) administered by the World Intellectual Property Organization. Finding the classification phrase that best fits your search is the key to using any patent categorization scheme. Use that term in your search, and if it returns a lot of results, narrow it down with other keywords or other search terms.

Citations: Forward and Backward Citation

Patent publications also include citations, much like conventional scientific papers do, to support or refute the points made by the authors. The topic of citations and the use of citation analysis are challenging yet extremely effective.

Examiners of patent applications determine whether the invention described therein satisfies the requirements of novelty, inventiveness, and utility. The examiners conduct relevant literature searches and produce a brief report summarizing their conclusions and recommendation about the patentability of the invention as filed.

These reports, which are called “search reports,” often, have no more than eight or nine citations. Searchers must take note that these few citations represent the closest prior art that the examiners have located. These examples are chosen to demonstrate if the examiner thinks the invention is innovative or inventive. Citations are extremely detailed. The precise lines, paragraphs, or images from the cited source are in line with the precise pertinent claims of the patent that they refer to.

Technology and innovation are dynamic; daily new patent applications are submitted for both incremental advancements of already-existing technology and for disruptive innovations that render earlier technologies obsolete.

Think about a published patent application from three or four years ago, let’s call it PA. It had been published at the time along with a search report that listed the referred documents, which we can denote by the letters B1, B2, and so forth. These cited sources are referred to as “backward citations” because they had to be published earlier than PA had been released. Since PA was published, we assume that technology has advanced and that later published patent applications have acknowledged PA in their search reports. We can designate these referring patent applications with the prefix F1, F2, and so on as “forward citations” because they must be published after PA.

Being the set of nearest prior art, PA, its cited documents (backward citations), and its citing documents (forward citations), are connected. Find a patent application and study it along with its cited and citing documents to gain an immediate sense of close prior art. This is a very significant notion. Keep in mind that the area of citing documents can constantly expand and that newly submitted patent applications may always cite previously published ones.

Patent Invalidation Search Report

A searcher will now select a small number of citations (patent, standards, non-patents, such as white papers, journals, research papers, you-tube or any informational video, etc.) that can be used against the subject patent after performing extensive invalidation patent and non-patent search on the subject patent (patent to be invalidated).
Each citation that made the short list has its subject and credibility thoroughly examined. In order to invalidate a patent, the innovation must be in violation of the laws established by several jurisdictions.

The shortlisted search identification and the best prior arts are mapped in detail following a thorough analysis. The invalidation search report includes a thorough review of the best prior art in relation to the claims of the subject patent (independent, dependent or both). The invalidation search report enables the clients to more thoroughly comprehend the prior art that has been found or the justification for their potential utility.

Depending on the customer’s needs, expectations, and budget, different search report forms are utilized at TT Consultants to present the prior art to the client.

Challenges Faced During Patent Invalidation Search

Challenge: Lack of publicly available patents and/or pending patent applications
Solution: TT Consultants offers an extensive analysis of prior arts, including patents, academic publications, and products on various paid/non-paid/ owned databases.

Challenge: The latest AI and ML-based analysis technologies are not integrated.
Solution: TT Consultants is using proprietary algorithms, AI and machine learning techniques, a machine that mimics the actions of a skilled searcher has evolved. Patent data, Non-Patent Literature, Standard Essential Patents, Litigation data, Corporate data, Reassignment data, and Examination data are among the different data sets. Additionally, we have our own internal tools, XLPAT and XLSCOUT, where combining machine learning and human learning produces the best outcomes. Analysis, insights, and well-informed decisions are mostly built on humanizing machine learning intelligence.

Challenge: Limited understanding of international patent laws
Solution: TT Consultants have a team of professionals who can conduct searches in native languages other than English, such as but not limited to Korean, Chinese, Taiwanese, and so forth, using native databases KIPRIS, J-PLATPAT, TIPO, CNIPA, ETC and are well informed with international patent laws. Additionally, we are connected to IP specialists from the US, UK, Taiwan, Japan, and Canada who have extensive IP understanding. A few of our staff members have experience working as USPTO patent examiners, so we always give you the best.

Conclusion

The latest tools to protect the patent and any potential for eventual money generation includes patent invalidation searches and patent watch services. An invalidity search can help weaken a competitor’s patent as well as strengthen your own by demonstrating the uniqueness and non-obviousness of your own. The patent portfolio then gains value as a result of this. On the other hand, a patent watch service keeps a careful eye on recently published and issued patents in the same technological field. This aids in developing a strategy to reap the greatest financial rewards from the patent for the longest period of time. Any business, group, or person that wants to survive and thrive in this highly competitive technical field must use invalidity search and patent watch services as their major tool.

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