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Patent Invalidation & Invalidity Search

March 31, 2021

By Lucy Rana and Abin T. Sam

Globalization of the technologies has transformed the business setups into a fiercely competitive eco-system. Survival of the companies and organizations in this eco-system is dependent upon the constant technological developments to keep themselves in the marathon of providing the best technological solutions to users at the cheapest rates with maximum profits.

However, these constant technological developments are accompanied by the huge capital investment and returns on this huge investment is often not sure. The big companies can afford to bear such mammoth expenses due to their financial immunity.

Companies and Organizations with financial limitations are left behind in this eco-system and their chance of survival are often slim to none if they fail to deliver the better product at cheaper price with greater profits. Their weak financial status is majorly the biggest hurdle in developing superior product or service.

This is where an invalidity search comes to the rescue. Patent invalidation is a tool that can be used by any company, organization and individual to diminish the technological dominance of their competitor by invalidating their patents. Invalidity search along with Patent watch service are two tools that not only keeps an eye on the competitor’s technological developments but also, assist in diminishing their patents that have potential to harm your technological dominance and subsequent revenue generating potential. In this article we will discuss in depth about the significance of invalidity search and patent watch service, and their benefits.

  1. What exactly is an invalidity search?

Patent invalidation searches or opposition searches are conducted to identify the patent and non-patent literature(s) that can hamper the claims of an invention rendering them non-novel and obvious, thus killing the patent[1].  Invalidity search is an extensive search of relevant prior arts after the patent has been granted[2]. The main objective of the invalidity search is to identify the relevant prior arts that were overlooked by the examiner and has potential to invalidate the patent.

Invalidity search can also be used to validate the claims of a patent. The negative results of an invalidity search dictates that the patent has claims that holds novelty, has inventive steps, and does not fall under the statutory exception of patents. It also depicts the strength of the patent and establishes its solidity. A strong patent portfolio brings in the potential for revenue generation through licensing and it is also helpful at the time of company acquisition[3].

Patent invalidation search is different from the prior art search which is conducted at the earlier stages of patenting. Patent invalidity search focuses on the language of the claim rather than the overall concept and idea of the invention.

  1. Who should choose the invalidity search and when?

Establishing the market dominance in the field of technology is an expensive affair since, cost of developing the new technology along with the cost of patenting is gigantic. Prima facie the only option to achieve the monopolistic power in the business is by developing the new technologies. This is often not possible if the company or the individual is financially challenged. So, the next best option to the achieve the market dominance or monopoly in business is by killing or invalidating the patents of the competitor.

The invalidity search can be proved to be an effective tool in case of infringement suit, patent portfolio assessment and killing the competition in business.

  • Patent Infringement Suit[4]:

Under the allegation of patent infringement, the alleged party (who is accused of infringement) can use the invalidity search in an attempt to invalidate or cancel the patent in question, thus rendering the allegation of infringement baseless. Invalidity search can help in invalidating the claims of the patents either by proving that claims are not novel or obvious in nature or falls under the statutory exceptions, by providing sufficient evidences of prior arts and subsequently the patent in question will be revoked.

In the other scenario, under the allegation of patent infringement, the alleged party can use the invalidity search to establish the fact that their invention is novel and non-obvious in nature thus it is not infringing the said patent.

The results of invalidity search holds great significance in the patent infringement suits, as not only it can be used to kill the patent in question but also it can also be used to save oneself from allegation of infringement.

  • Patent Portfolio Assessment:

Invalidity or validity search can also be used to establish the strength of the patents. Invalidity search report stating the claims of a patent novel, non-obvious and the fact that they do not fall under any statutory exception of patents, establishes the strength of the patent and this makes the patent more valuable.

A patent grant certificate along with an invalidity search report stating the claims of the patent novel and non-obvious, are the strongest evidence of strength of a patent. A patent is likely to bring more value through licensing, if it is immune to any infringement suits and possess greater degree of novelty and inventive step (non-obvious in nature) and is less likely to be objected on the grounds that it falls under the statutory exceptions after it is granted[5].

Invalidity search can be used as a voluntary step by any company, organization or individual to assess the strength of its patents.

  • Clearing the Competitive Field:

Patent invalidation search is an effective weapon when it comes to diminishing the patents of competitors. Invalidity search not only dictates whether the claims of a granted patent are non-novel and obvious in nature, but also whether it falls under the ambit of statutory exceptions for grant of patents such as, invention was already in use or available for sale or exhibited to public more than twelve months prior to filing the patent application, or the patent was obtained wrongfully or fraudulently[6].

The main aim here is to unearth the prior arts and facts that were overlooked by the patent office during the prosecution of said patent, which has potential to kill the granted patents of the competitors thus clearing the competitive business field.

  1. What is a Patent Watch Service?

A patent watch service or patent monitoring service relates to the process of monitoring and checking the newly filed patent applications and granted patents that have potential to harm our patent. Identifying the newly filed patent application or newly granted patents that are in similar technical field and delivers the same or better results as our invention by using similar or identical method or process is usually the aim of patent watching[7].

However, Patent watch service can be tailored to meet the specific demands of the clients. A client (Company, organization or individual who is owner or assignee of patent) can provide the specific requirements based on which the patents and pending application will be monitored. For example, a client might want to monitor the patents that provide better results at cheaper price or uses the identical technology in a different way to achieve efficient results.

In patent watching, the official data bases of patent offices of various countries and journals are referred. In the today’s fiercely competitive business eco-system, irrespective of the industry in which a company operates, it is an absolute necessity that a company keeps a close watch on its competitors’ IP activity. A patent watch services reveals the IP activity of the competitors, allows you to have a bird’s eye view of competitors’ Patent litigation, R&D strategies, Technology development, Patent transfers, Acquisitions and licenses and Current patenting activities.

The patent watch service can be classified in to two major categories, which are as follows:

  • Technology Based Patent Watch Service: This type of patent invalidation search is limited to latest patent applications published and latest patents granted in the specific field of technology[8]. After the identification of the relevant patents, the results are compiled in a comprehensive report. Technology based patent watch service has wider ambit and covers greater number of published and granted patents.
  • Competitor Based Patent Watch Services: In this the patent watching is further limited to the patents applications published and patents granted to business competitors only. Competitor based patent watch service will be focused on the technological progress of competitors. The other aim of this patent watch service is to  identify the abandoned, expired, or rejected patents of business competitors that can be further be used without infringing any patent[9]

Conclusion

Patent invalidation search and patent watch service are the modern weapons to safeguard the patent and subsequent revenue generating potential. Invalidity search not only aid in diminishing the competitor’s patent but it can also strengthen your patent by establishing its novelty and no-obviousness. This subsequently adds value to the patent portfolio. Patent watch service on the other hand keeps a close look on the recent published and granted patents in same technical field. This helps is strategy making in order to gain the maximum financial benefits from the patent for as long as possible. Any company, organization or individual who wishes to stay alive and flourish in this fiercely technological domain must use invalidity search and patent watch service as their primary weapon.

[1] https://www.wipo.int/export/sites/www/tisc/en/ppt/Philippines/validity_search.pdf (Refer page 3)

[2] https://www.inquartik.com/blog/basic-patent-invalidity-search/ (Refer para 2)

[3] https://www.wipo.int/export/sites/www/tisc/en/ppt/Philippines/validity_search.pdf (Refer page 3, para 2)

[4] priorartsearchers.com/invalidity-validity-searches/ (Refer Last Para)

[5] https://www.priorartsearchers.com/invalidity-validity-searches/ (Refer Last Para)

[6]https://www.wipo.int/export/sites/www/meetings/en/2006/scp_of_ge_06/presentations/scp_of_ge_06_holzer.pdf (Refer Page 9 , Para 2, Page 10 Para 1, 2 & Page 11)

[7] https://thepatentwatchcompany.com/patent-watching-monitoring-services/ (Refer Para 1)

[8] https://thepatentwatchcompany.com/patent-watching-monitoring-services/ (Refer 2nd Para)

[9] https://thepatentwatchcompany.com/patent-watching-monitoring-services/ (Refer 3rd Para)

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