VALIDITY/INVALIDITY SEARCH

a.      Overview

An Invalidity Search is a prior art search done after a patent is granted. The purpose of an invalidity search is to find prior art that the patent examiner overlooked so that a patent can be declared invalid. Validity searches are also conducted to check the strength of a granted patent while exploring the available licensing options.

b.      Benefits

To invalidate a patent which has caused risk to the sale of client’s product

To invalidate a patent which has become a reason for patent infringement lawsuit

To check strength of a granted patent before exploring licensing options

c.       Reasons that lead to Patent Invalidity/Validity

Company A’s Product on Sale >> Company B files a Patent Infringement Lawsuit on Company A >> Company A tries to Invalidate Company B’s Patent >> Invalidity Search

Company A has a Granted Patent >> Company A wants to explore Licensing Options for the Granted Patent >> Company A first checks the strength of the granted patent before exploring the licensing options

d.      Steps for Invalidity/Validity Search

Understanding Target Claims and Enablement of Target Claims >> Identifying the Cut-Off Date to search Prior Arts >> Understanding the Infringement Lawsuit (if any) >> Webbing Search >> Keyword Based Search >> Classification Based Search >> Combinational & Logical Search >> Non-Patent Search >> Assignee/Inventor Based Search >> Similarity Search >> Citation Search >> Shortlisting Relevant References >> Detailed Mapping of References vs Target Claims >> Translated PDFs of Non-English References

e.       Plus Points

Interim Reports (if required), Color Coded Claim Charts, Analyst Comments considering understanding of Patent Claims and Estoppels from the File Wrapper Analysis, Professional Databases for Search

f.        Turn-Around Time

5-6 Working Days