Validity/Invalidity Search – Understanding and Approach
Purpose of Validity/Invalidity Search
Determine whether a patent already obtained on invention is valid or not Validity of patent can be challenged during whole lifetime of patent (and under certain circumstances even after it has been lapsed) by filing opposition, re-examination, or invalidity action, etc.
• In general, all literature published before priority date of the patent to be invalidated should be searched
• Grace period for public disclosure
– 12 months for US
– 6 months for EP
Validity/Invalidity Search is useful to:
• Determine value of potential licensed patent by licensee
• Determine strength of patent for setting minimum royalty payments by licensor
• Invalidate patent in order to avoid infringement or legal challenge
Understanding the request
• Review patent(s) and background
• Conference with the client
– Which date(s)
– Specific claims?
– Specific client suggestions/preferences
– Personal suggestions
– Check for prior opposition, searches
– Structure – how specific or broad?
Search General Approach
• Review/learn search topic
• Understand exactly client’s request
• Create comprehensive strategy
• Search using available and appropriate files
• Analyze
• Prepare organized and understandable report
Invalidity searches should focus on areas or sources of prior art which patent granting office(s) did not search in special case or usually is not used for searches:
– Searches focusing on literature (patent and non-patent) not covered by usual public patent data bases
– Searches using other IPC classes as used by the patent office(s) in individual case
– Searches conducted by patent offices not involved in prosecution of the special patent family
– Hand searches in libraries as well as searches on public use and other “non-written” prior art
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