Patent Invalidation Search | Invalidity / Validity Search

PATENT INVALIDATION SEARCH

Patent Invalidity / Invalidation also known as Opposition Study or Patent Validity Study. This is often done by arguing with the patent authorities that the claim(s) of the Patent to be Invalidated (PTBI) at the time of filing was not novel or obvious.

The objective of Patent Invalidation is to invalidate or revoke an already registered/ granted patent claims or for a pre-grant opposition of a published patent application claims.

Patent Invalidation is conceptually similar to Patentability Study, as for the project, effectively a Patentability study is being done prior to the date restriction of PTBI’s filing date.

Ordinarily one would assume that invalidations are near impossible projects since granted patents have already been scrutinized by expert patent examiners for novelty and non-obviousness. However, this logic fails the test of time as the advancement of databases and electronic publication of old literature has led to previously unpublished relevant documents being electronically available and searchable now, which can form the basis of invalidation.

Case Study

A company XYZ observes that their competitor company PQR is controlling a multiple SIM card technology invention by virtue of patent rights in India and making huge profits due to the product bearing the technology. The company carries out an invalidation study with the aim to invalidate the said patent and end company PQR’s monopoly in the multiple SIM card product market. The study uncovered a Korean language technical paper, which mapped onto the features claimed in the Indian patent written in English. On submission of the document and verified translation of the Korean literature to the court, the patent was successfully revoked, thereby taking away monopolistic rights of company PQR over the patented invention.

Recommended practices while doing Patent Invalidation Search | Invalidity / Validity Search on Patent Database Platform

  • Date Restriction: Before the filing date of the PTBI – Since the searches are run to locate prior art ordinarily published before the filing date of the patent, a date restriction is set on the search accordingly. Sometimes one or more of the claims of a patent have a priority date later than the filing date of the PTBI. In such cases the date restriction shall be prior to the priority date of the claim.

  • Jurisdiction Restriction: None – Since the novelty and non-obviousness criteria for the PTBI at the time of filing is absolute and across the globe

  • Document Type Restriction: None – Again, it is important and interesting to note that even a non-formal reference such as a comic strip can be used to destroy the patentability of an invention. (Reportedly, Science fiction movie scenes have been used for invalidation of patents)

  • Additional searches such as assignee based, inventor based, and citation based are carried out in an invalidation search. These searches help in preparing an optimal search strategy to locate a relevant prior art.

  • Invalidation is specific to the features of the claim to be invalidated. A broad invention covering the concept of the invention but not specific aspects of the invention may not be considered related

  • As applicable in a patentability study, the volume of non-English literature for patentability projects should not be neglected or underestimated

  • To reiterate the point mentioned for patentability, it must be understood that non patent searches are as important as patent searches in patentability and invalidation searches

  • Even if a single relevant result directly mapping on all the features searched is found, the project can be terminated immediately.

This article contains excerpts taken from E-Book on Practical Patent Searching, second edition. To continue reading please download the full copy here: https://patseer.com/book-on-patent-searching/.

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