Invalidation/Validation Searches are exhaustive prior art search conducted after the grant of patent to either validate the enforce-ability of the granted claims made by a patent or to invalidate one or more claims of a competitor’s patent. The methods and resources adopted for Validity / Invalidity searches are same with the only difference being the results generated (valid or invalid patent claims). The invalidity/validity searches are extensive as they aim to probe into a large number of patents, patent applications, and all the non-patent documents available.
Invalidity Searches are one of the first steps taken by a company when confronted by the allegation of patent infringement. In case you have been sued for infringing a patent, you may use Invalidation Search as a tool to try to invalidate that patent. In contrary, when you file lawsuit for infringing a patent, you may use validity searches to confirm the enforce-ability of your granted patent claims. Validity searches are also conducted to check the strength of issued patent in light of prior art while negotiating the licensing or acquisition deal.
In order to conduct an invalidation/validation search, we require the patent number and specific claims along with the target priority date. It is an effort from our end to figure out every possible prior art that was missed during the Examination by the Patent Office.
Determining patent invalidation is a two‐step process. First, the claims are analysed by studying all of the relevant patent documents. Experts in the subject matter are consulted for this responsibility. Second, the claims are mapped upon the accused product or process. This means that the product or process is scrutinized to see if it is considerably matched by the claims; or in other words, the claims are tested to see whether they describe the accused invalidation.
If it the case where an existing patent is hindering any product ready to be commercialized, then the concerned company will make efforts to invalidate the patent so as to make way for the release of their product. Invalidation of the granted patent is prosecuted in judicial courts. According to Indian patent office rules, patent invalidation cases can be initiated by “Any person interested”. “Any person interested” can be defined as a person engaged in, or in promoting research in the same field as to which the invention relates. Patent can be invalidated on various grounds. These grounds / strategies for the invalidation of a patent, which are followed by attorneys in the judicial courts, are mentioned below:
1) Invention claimed in the patent is not novel.
2) Subject of the claim of the patent is not an invention.
3) Patent was wrongfully obtained by a person other than the person entitled.
4) Insufficient disclosure of the invention
6) The claims included in the patent are not fully substantiated by the description provided.
7) Failure to disclose information relating to foreign applications.
Insufficient disclosure regarding the invention can also be construed as patent invalidation. It is under law that a patent shall be granted, as long as all the pertaining knowledge and information regarding the invention is disclosed to the public. Failure to provide all of the information required under law may deny the patent validity of that invention. The disclosure of information can include the following:
- All material information relating to the invention
- Best mode or method to produce the invention
- All material art known to the inventor
- All information regarding the patent validity of the invention, such as prior use or descriptions of the invention more than one year prior to the filing date for patent registration
- Any information provided that is considered to be false or with the intent to deceive in accordance to these provisions can also be grounds for patent invalidation
- The claims as provided by the patent do not fully or successfully describe the invented product or innovation
Detailed Search Report:
Our search results are comprehensive and are presented as a Claim chart representation of each Prior Art. The highlight of such claim charts is the “Claim Enablement” portion, where we define each element of the claim linking it to its function/aspect mentioned in the description portion. Our results are provided in a user-friendly format with hyperlinks and bookmarks. To reduce the analysis time, we provide each reference with its bibliography detail. A thorough and detailed analysis of all references is provided which includes feature-to-feature mapping.
Additionally that we also provide “Compare Tool” integrated in the report for comparing the claims of the patent to be invalidated with the captured reference opened in a separate window.
We have full text access of more than 27000 journals, Library access to international and national research institutes, Thesis database and product catalogues. A ‘no stone left unturned’ approach is followed to ensure that each relevant patent is identified in our search & analysis.
We analyse the file-wrapper for understanding the prosecution history of the search to comprehend the novelty of the patent and thereby building a strong argument. We also provide novelty and obviousness/inventive step assessment based on the results obtained.
Expert Search Teams:
The research team at Aristocrat Market Research comprises engineers, PhDs and IP professional’s expert of Patent Laws belonging to a diverse subject matter expertise. With a clear understanding of their domain, they strive to provide quality services in specified timelines. Based on the technology domain for which the search is intended to be carried out, we assemble our research teams based on their technical expertise. We follow a ‘right team for right patent’ approach wherein we make sure that the project team comprises domain specific experts.