Before going deep into why patent validity searches are required, let’s first discuss the concept of Validity of a patent.
Patents are issued by the patent office based on the interpretation of the claims of the invention and their comparison with the closest referenced patents identified. These references are always provided by the applicant to the patent office to help the examiner in the examination process..
After considering the provided referenced patent information, the examiner assigned to the patent makes a fresh worldwide search in the patent and non-patent databases to see if there are other arts available closer to the given invention. Then the examiner will make a decision to reject the claims of the patent and compel the applicant to modify the claims of the patent or issue the patent if the invention satisfies all the requirements of patentability - such as non-obviousness, usefulness and enablement together with novelty.
Broadly speaking, a patent validity search aims at finding a reference or piece of information, which can prove that a patent has been erroneously issued.
Here are few questions that one may have regarding validity of a patent:
- Were the searches done by the applicant as well as the examiner complete?
- Did they identify the closest references available before the date of the invention or before the filing date of the patent? Did they uncover references overcoming the languages barriers across the world?
- Did they search the appropriate journals, data published in company websites or blog sites or product brochures in different countries?
What happens if the efforts behind uncovering the closest possible references before or during the examination stage were performed inadequately? Maybe a closer reference, that dates prior filing/earliest priority date claimed by the patent in question, was inadvertently missed during the examination and was discovered after the patent was granted. This can prove that the issued patent to be invalid.
There are many reasons for why someone would wish to verify the validity of a patent. A situation could arise when your product faces threat from an active patent or you wish to purchase a license of another’s patent rights, you must ask yourself “Is the patent in question valid and legally enforceable?”
In the case of Infringement suits, where your product is in trouble as it violates the rights of an active patent, one of the best defense mechanisms is to prove the patent in question is invalid.
Steps for evaluating validity of a patent:
1. Check if the patent is active i.e. if the maintenance fees have NOT been paid or the patent has completed its term as applicable by law. If the patent is valid based on 1 above:
2. Refer the file history (file wrapper) of the patent, which shows the complete objections and arguments between the applicant’s and the examiner at patent office, as well as any amendments that resulted in from the prosecution. These amendments depicts the sometimes the strengths or weaknesses of the claims that were objected by the examiner that forced the applicant to argue or amend.
3. Conduct patent and Non-patent literature search to find out relevant references before the critical date of the patent in question. Please Note: A critical date could be the filing date or the earliest priority date of the patent or the date of invention or a date chosen by the attorney. It is always better to confirm the critical date with the attorney through discussion.
4. Examine and compare the search results with the issued claims, and prepare a claim chart to show to what extent the claims in question match the scope of the uncovered references. When the attorney makes the patent validity opinion may get help from the claim chart to check if the claims “read on” or obvious or anticipated based on the prior art.
Our versatility in technology specific personnel and good degree of understanding of the need of a patent validity helps us in searching patent and non-patent literature by using the world leading databases to identifying the closest matching references. Through our precise analysis of the uncovered references we prepare a well informative report that helps you to judge the scope of the claims to be invalidated.