A validity search can be done when a litigation relating to infringement of a patent becomes a clear possibility and the defendant needs to nullify the plaintiff's patent. A validity search also proves useful during licensing discussions as it is important to assess the value and strength of a patent before buying a license for its use.

Steps for evaluating validity of a patent:

1. Check to see if the patent is inactive i.e. if the maintenance fees have NOT been paid or the patent has completed its term as applicable by law.

2. Refer the file history (file wrapper) of the patent, which shows the complete objections and arguments between the applicant and the examiner at patent office, as well as any amendments that resulted in from the prosecution. These amendments depict the strengths or weaknesses of the claims that were made by the examiner that forced the applicant to argue or amend.

3. Conduct patent and non-patent literature searches 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 the matches between the claims in question and the scope of the uncovered references. The attorney, while making the patent validity opinion, would check the claim chart to verify that the claims “read on,” are obvious or are anticipated based on the prior art.

Our diversity in technology specific personnel and the high degree of understanding for the need of a patent's validity helps us in searching patent and non-patent literature.  Through our precise analysis of the uncovered references we prepare an informative report that helps you to judge the scope of the claims to be invalidated.

Legal Advantage offers the following Validity Searches: