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.

Time Range for Searching

• 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

Search Specific Approach

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

Comments

Post a Comment

Popular posts from this blog

Databases on the FDA Website

-
The search engine on the FDA Website will not find information that is in the databases that make up a large part of the site. Those databases can be accessed separately, using the links below. Following each link is a brief description of the database. Animal Feed and Drugs FDA Approved Animal Drug Products : A listing of searchable databases in the following categories: Approved Animal Drug Products (Basic search), Approved Animal Drug Products (Advanced search), Suitability Petitions, Sponsors, Green Book, Code of Federal Regulations, Federal Register, Patents, and Exclusivity. FDA BSE/Ruminant Feed Inspections Firms Inventory : Inspection information of renderers, feed mills, ruminant feeders, protein blenders, pet food manufacturers, pet food salvagers, animal feed distributors and transporters, ruminant feeders, and others regarding compliance with the BSE/Ruminant Feed regulations. Biological Products Adverse Event Reporting System : The Adverse Event Reporting System is a compu...
Read more

IPEXL - New Patent Search Tool

-
Image
IPEXL has released the beta version for their Patent Search tool. Its really nice and provides many feature. Must to have a look for patent professionals. Features: Patent Search - Patent search over China, Taiwan, Hong Kong, Singapore, Japan, S. Korea, PCT, United States, Europe, UK and Canada with translation link through google translator. Patent Directory - Patent search based on IPC class IP Market Place - Patents open for license.
Read more

Employee Retention – A critical issue, why..and How to solve?

-
Developing an employee retention plan is important to prevent raiding of your staff. This tool includes ideas on keeping employees happy, the business connection, time and money, and more. Using these tools and techniques, you can make better decisions on how to retain your top employees. Key employee retention is critical to the long term health and success of your business . Employee retention matters. Organizational issues such as training time and investment; lost knowledge; mourning, insecure coworkers and a costly candidate search aside, failing to retain a key employee is costly. Various estimates suggest that losing a middle manager costs an organization up to 100 percent of his salary. The loss of a senior executive is even more costly. Employee retention is one of the primary measures of the health of your organization. If you are losing critical staff members, you can safely bet that other people in their departments are looking as well. It is important for the management t...
Read more