Patent invalidation searches probe into the foundations of a granted patent's validity, offering invaluable insights into its enforceability. Bin Wu, Senior IP Solution Consultant at Questel, discusses the complexities of patent invalidity searching and explains how Orbit Intelligence can help to demystify the process.
In the intricate world of intellectual property (IP), understanding the nuances of patent validity is paramount. The strength of a patent lies in its immunity to challenges posed by prior art. This pivotal assessment, known as an invalidation search, delves into the core of a granted patent's validity, offering invaluable insights into its enforceability.
Decoding Patent Invalidity
Patent invalidation, also known as an opposition or validity search, is a meticulous inquiry to ascertain the validity of one or more claims within a granted patent. It seeks to establish if prior art exists that could potentially challenge the patent's validity.
In essence, it is a litmus test for the enforceability of a patent. The term ‘prior art’ encompasses information related to a patent that has been published worldwide in any language, predating the patent's first filing date. A patent that emerges unscathed from an invalidation search can be deemed robust and resilient.
When and Why it Matters
The need for a patent invalidity search arises in various pivotal scenarios:
- Licensing Negotiations: Parties engaged in licensing negotiations may conduct an invalidation search to gauge the potency of a patent. A weak patent can significantly impact the terms of the license.
- Patent Infringement Lawsuits: Companies facing allegations of patent infringement may undertake an invalidation search to unearth prior art or other grounds that could nullify the asserted patent.
- Mergers and Acquisitions: In the due diligence process of mergers and acquisitions, scrutinizing a company's IP portfolio is imperative. This includes validating the strength of the patents they hold.
- Post-Grant Proceedings: Even after a patent has been granted, it remains susceptible to challenge. Parties may utilize an invalidation search to uncover prior art or other justifications for initiating post-grant proceedings such as inter partes review or ex parte reexamination.
While there are other applications, the potency of this tool in safeguarding a company's interests concerning a patent is undeniable, be it in investment ventures or legal disputes.
The Patent Invalidity Search Process: A Three-Stage Journey
Patent invalidity searching comprises a three-stage journey:
Stage 1: Understanding the Patent Claims and Building Your Search Statement
The cornerstone of any invalidation search lies in comprehending the patent claims and crafting a robust search statement. This initial step demands a thorough examination of the patent to address key queries, such as:
- What is the technical domain of the patented innovation?
- What precise technical problem does it solve?
- What sets the patented invention apart from prior art, in terms of means and characteristics?
- What broad concepts and features are outlined in the claims?
- What constitutes the novelty of the patented invention?
Once the searcher gains a lucid understanding of the invention, the next stride is to pinpoint the key features of the patented innovation, answering the aforementioned queries. These key features should encompass the novel and inventive-step aspects identified during the prosecution.
Our powerful patent searching and analysis platform Orbit Intelligence consolidates patent family citation information, streamlining the identification of these crucial aspects across various jurisdictions (see example pictured below).
Stage 2: Designing a Search Strategy
With the key features in hand, the searcher embarks on the task of constructing search strategies to unearth both patent and non-patent publications that reveal one or more of these features. This can encompass a spectrum of sources, from in-force, issued patents to technical papers and articles.
Orbit Intelligence presents an extensive array of non-patent literature resources, enabling the searcher to explore both realms in parallel:
The searcher can then decide whether to create search strings for each key feature individually or amalgamate two or more in a single string to compile a dataset. It's an iterative process, meticulously designed to include all pertinent patent publications and exclude as much extraneous noise as possible. The searcher sifts through the dataset manually, ensuring relevance to the key features, while also keeping an eye on the technology domain and budget constraints.
Building an effective patent invalidity search strategy requires searchers to follow five high-level steps, namely:
- (1) extracting relevant keywords to search;
- (2) identifying relevant classification codes from the various international patent classification systems;
- (3) formulating (and reformulating) logical search strings;
- (4) searching for forward and backward citations; and
- (5) searching by inventor/patent assignee.
–> For more detail on each of these steps, please read our article 'Five High-Level Steps in Patent Search Strategy Building'.
Stage 3: Analyzing Search Results
The searcher analyzes the search results after finalizing the search strategies and/or building the dataset. This stage typically consists of two steps: preliminary screening and detailed review.
1. Preliminary Screening
The objective of this step is to eliminate irrelevant references that show up in the search results due to co-incidental combination(s) of keywords and/or classes. The searcher takes about minutes on average to review a reference to ascertain potential relevancy to the key features of the invention. The searcher discards the references that do not clearly relate to the field of interest. Therefore, if a reference has the slightest chance of being relevant to the field of interest, then the searcher does not eliminate it from the dataset and includes it in a list for detailed review. Note that the dataset extracted after the preliminary screening step might have irrelevant publications.
In Orbit Intelligence, ‘Key content’ covers ‘Object of Invention,’ ‘Advantages of the Invention Over Previous Art,’ and ‘Independent Claims,’ which will be extremely helpful to the searcher in screening the result.
2. Detailed Review
The searcher reviews the dataset obtained after excluding the clearly irrelevant references from the initial dataset. The detailed review involves reading excerpts of the patent references in light of the key features. Having said that, the actual time may vary based on the length of the reference document.
Orbit Intelligence has many functionalities to enable the searcher to review the details of the patent documents, including:
- Kwic (Key Words in Context)
This displays the keywords of a search in context, meaning the number of hits for the keywords in select fields. All fields in the entire family searched, if they contain the keywords, are displayed. It also contains:
(1) A summary by searched fields, where the table cells are colored following a blue shade scale: the more hits, the darker the cell.
(2) A summary by hit keywords, where the table cells are colored following a blue shade scale: the more hits, the darker the cell.
(3) A text excerpt displaying all the abstracts, titles, claims, etc. in the family if those fields contain the keywords. The keywords are shown in bold.
- Patent Drawings and Accompanying Descriptions
- Highlighted Keywords
Mastering these foundational elements lays the groundwork for a comprehensive and effective invalidation search.
Find Out More About Patent Invalidity Searching
In the dynamic realm of IP, arming oneself with the right tools and knowledge can be the key to success. With Orbit Intelligence as a guide, navigating the intricate process of patent invalidity searching becomes not just a possibility, but a strategic advantage in the pursuit of innovation and competitive edge.
Find out how you could unlock hidden insights in the global patent database with Orbit Intelligence by requesting a software demo or contacting our specialist IP Solutions Consultants today.
Bin Wu is responsible for supporting a variety of Questel IP product and service solutions. Before joining Questel, he used to work as an electronic engineer, patent attorney, in-house IP professional, and patent searcher. Wu Bin has more than 15 years of experience in the IP field and is familiar with different kinds of technology intelligence analytics theories and patent prosecution practice.