Everything You Wanted To Know About Invalidity Search

What is a patent invalidity search?

 

Also called an opposition search, the objective of a patent invalidity search is to identify patent and non-patent documents that may impact the claims that are present in a specific patent. When a competitor attacks you with patent infringement claims, your best resort is to prove the patent invalid. A patent validity/invalidity search is also done to calculate the strength of a patent to see how much it can guard itself against claims of validity. 

 

Using the results from this search, you can block patents and validate the claims of a patent portfolio which can be useful during a licensing or a company acquisition process. An invalidity search is conducted by a defendant to invalidate a patent by conducting a prior art search. 

 

A patent invalidity search is performed for three important reasons:

 

  • To check whether someone holds an authentic claim to the patent
  • To invalidate claims of patent infringement
  • To search for patents before any new patent enforcement

 

How do you perform a patent invalidity search?

 

The first step towards performing a patent invalidity search is to establish the priority date of the patent claims. Disclosures that are publicly available before the date of the filing of the patent is considered to be prior art. Also, if a patent application has been published by you after the patent’s filing date, it will receive a prior art rank. 

 

You might not always get enough material to stab at your patent’s novelty, but patent validity search will give you an idea as to where to look for if there is an anomaly. Below are the steps that you should take while performing a patent invalidity search. 

 

  • Understand the subject:

 

You need to know which are the technical and patent issues so that you can fully interpret the claim during the validity search. Since validity searches are usually performed on patents that have already been allowed, you need to have a broad sense of the claims to find further relevant art. Read in detail about the prosecution history at the beginning of the search, including the file wrapper to interpret the claim which needs to be invalidated. 

 

  • Do not leave out even a small detail:

 

To conduct an invalidity search successfully, you need to pore through innumerable patents and literature documents. A thorough examination will include an evaluation of the specification text, figures, chemical formulas, tables, etc. The searcher should focus on a variety of matters that will be of relevance to cover most grounds, if not all. 

 

  • Conduct a broad search:

 

When thorough invalidity searches are conducted, the findings will help you make the right business decisions. Missing prior art could cost you millions in patent infringement suits or having to re-work the product. You need to gather all your resources and search to the broadest extent possible. Start with works such as patent office search reports, history of the prosecution, opposition proceedings, litigation proceedings, etc. 

 

  • Do not ignore non-English literature:

 

Even though the volume of non-English literature is not much, you should not neglect or underestimate its importance during your searches. 

 

  • Know when to halt the search:

 

The problem with invalidity searches is that there is so much information to gather and so many places to seek them from. What happens if you don’t know when to stop? You will end up extinguishing your resources and burn a lot of money, not to forget the amount of time you will end up wasting. Your search strategies should also mention clearly when exactly you will stop so that it doesn’t go on for a long time. 

 

  • Do reporting properly:

 

The final report should be submitted in an easy-to-understand manner. While it is tempting to cite all the resources, all these references might not be relevant to the client. Offer a brief interpretation of the results and add any other supporting information if necessary. Report the findings in a matter of fact manner instead of offering opinions as they can be used against your client. 

The final report for the search should include relevant prior arts, key features, search strategy, keywords, classes, key assignees, key inventors, and claim charts that map relevant prior arts with the features of claims. A detailed report will help you understand the validity or invalidity of the claims in the patent. 

 

Factors involved in a patent invalidity search:

 

It is different from a prior art search because of a few factors that are involved in a patent invalidity search. Let us look at them.

 

File wrapper information:

 

File wrapper, or the dossier content, provides the most updated information regarding a patent application’s progress. It includes information on the examination process, search reports, office actions, correspondence with the patent office, and so on. When you read the file wrapper, it will give you an idea about the aspects on which the patent has been granted or if there is any novelty feature for the patent. The searcher will be able to identify if a claim has not been identified by the examiner. 

 

A file wrapper will also tell you about the kind of search strategy that was utilized by the examiner. Based on this, the searcher can find references to invalidate the claims of the patent. 

 

Cited references:

 

Both patent and non-patent literature which have been cited for the targeted patent are called cited references. You can gather the cited references from the file wrapper. When the analyst goes through the cited references, they can see the ones that have already been used against the targeted patent. By doing this, it becomes easy to get an idea of the missing part to invalidate the claims of the targeted patent. 

 

Date Restriction:

 

To find out prior arts and prior right cases, Date Restriction plays a big part in the invalidity search. A prior art case is published before the priority date of the patent that is to be invalidated. Prior right cases are those which are published after the priority date of the targeted patent, even though their priority date is before that of the targeted patent. 

 

Conclusion:

 

With all that said, the first thing you need to do before conducting a patent invalidity search is to consider the patent’s filing date. With patent invalidity search, you might be able to find prior art which the previous examiner might have missed out on. If a business is challenging the patent of a competitor or is preparing for a defense against an infringement charge, then the ideal retort is this. 

 

If you want to find out the validity of a patent, reach out to ResearchWire, our expert analysts will be more than happy to take care of it. Our in-house experts understand the patent laws for different countries, and are adept at conducting an expert search. 

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How to file a patent in a few easy steps

Inventions have the power to change the world. 

A simple example would be the patent named “Navigation system using satellites and passive ranging techniques,” or the GPS. 

Can you imagine traveling these days without the help of a GPS system on your smart phones? 

When an invention is protected and the inventor stands to gain from it, that acts as an inspiration for every inventor out there to do more. That’s why protecting your invention is important. 

Getting your invention patented is the best way to protect your invention from others. If you have heard about how difficult it is to file a patent, then you probably are right. There are a lot of things that need to fall in place for you to get your invention patented. Thankfully, the entire process can be broken down, and thus becomes less complex than it actually is. 

 

Let us look at how you can file a patent in a few easy steps:

 

#1 Have a deep understanding of your invention:

The first step towards getting your patent is to ensure that you know your product inside out. What part of the invention makes it unique and useful? Once you are clearly aware of what makes your invention worthy of getting a patent, the next step is to consider the scope. You need to find out if there are other ways to invent your product. Write down all the other ways of making your invention work, even if they are not the most ideal way to do it. 

You need to find if your invention has a broader application. If that’s the case, then you need to do more modifications to narrow it down. Doing all of this will ensure that you will be able to protect and will also benefit from being aware of the full scope of the invention. Your patent application will be tighter and more likely to be approved by the patent office.

 

#2 Keep a record of how you came up with the idea:

Make sure to keep a record of how you arrived at the idea and the step-by-step process that you took to come to this stage. A written record like this can actually help your case if you face any issues and it even helps bolster the creative process. Write down everything, from the changes you made, corrections, mistakes, and even the slightest line of action. 

Keep records of who has been given access to your idea. Ensure that all of these people have signed a Non-Disclosure Agreement (NDA) which specifically states that the rights to your idea and their work on your idea are all yours. Hire a patent firm and make sure that you get the NDA drafted by their lawyer so that there are no loopholes which might eventually come to bite you. 

 

#3 Does your invention qualify for patent protection?

Ideas cannot be patented. Everyone knows that. So if you want to protect your invention, you need to show the patent office how exactly it works. For an invention to be patentable, it must be new, non-obvious, and useful. 

New means that the invention cannot be known, used, described or patented before the filing date of your patent application. 

Non-obvious means that the invention should be significantly different from similar inventions which are already known. 

Useful means that the invention is useful, as in, a chemical, mechanical or electronic invention. 

 

#4 Patent Search:

Doing a patent search will help you figure out if your invention is new. Searching for prior patents and going through previously published patent  applications will assist you in understanding if the patent is patentable. While a patent search isn’t really a must, it will help you determine the proper scope for the patent application. 

If you plan to do patent search by yourself, we will advise you against it as it requires technical expertise and complex tools that only an IP firm will have. Do remember that the patent office will conduct its own search after you file your patent application. 

 

#5 How do you want to protect your invention? 

File a provisional patent application at first. This offers you protection in case someone says that they had the idea before you did. You can even take a year after this to file your patent application. During this period, you can add claims to strengthen the prototype that you have built, but you cannot add anything new. 

Let’s say you have added a piece of technology or something that adds more firepower to your invention, then you need to file a new patent application to add them. 

There are three main types of patents: Utility, Design and Plant patents. You have to figure out the right patent type for your idea. 

Utility patent- It is an exclusive right that is granted to an invention which doesn’t allow anyone else to profit from the invention without the inventor’s permission. 

Design patent- This type of patent is usually granted if the product has a unique configuration, unique surface ornamentation, or both. 

Plant patent- This patent protects a new and unique plant’s key attributes from being copied, sold or used by others. 

 

#6 Write your patent application:

You need to prepare a specification that also includes an abstract, summary, background, detailed description, conclusion, the scope and so on. Patent applications are a complex affair if you are doing it by yourself. They have several parts, and each of these can be rejected for many reasons. Ensure that you double and triple check what you have added in your patent application before sending it. A mistake might end up costing you a lot of money, more importantly, a lot of time too. Drafting the right patent application requires a lot of practice and technical know-how. It is strongly recommended to hire an IP firm to take care of your patent application. 

 

#7 Wait for the patent examiner’s response:

For your patent application to be processed, it takes at least one to three years. Make sure you get your application right the first time itself as you do not want to find that your application has been rejected owing to mistakes that could have been avoided. One patent examiner will be assigned to your invention and if you ever receive any communication from them, ensure that you respond to it immediately. 

If you have an attorney, the patent office will reach out directly to them. You can also get things expedited by arranging an interview with the patent examiner. It will help clarify the concerns they have about your invention, if any. 

During this period of time when you are waiting for a response from the patent office, make sure you are working on the business side of things. Since your patent is pending and the invention is protected, you can still talk business to interested parties. 

 

#8 “Notice of Allowance”:

The patent office will issue a “Notice of Allowance” if you are going to receive the patent. After you pay the required Issue Fee, you will receive your patent approximately after one to three months.  Once your patent is granted, your invention or design will be protected anywhere from 14 to 20 years, depending on the patent that has been granted. 

After you receive the patent, make sure you keep the patent alive by paying the maintenance fees. 

 

Conclusion:

Above are the steps using which you can file the patent easily. Unless you are 100% sure that you can handle the patent application process because you have dealt with it earlier, do not do it by yourself. If you still plan to do it by yourself, make sure you scrutinize each and every point that you add with excruciating detail and thoroughness. There cannot be any lapse because that would mean that the patent office will get back with a rejection. It can be a terrible cycle if you do not get the application right in the beginning itself. 

Get in touch with Researchwire’s patent experts who will help you with filing your patent application if you have an invention that you think deserves formal protection. 

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HOW TO SPEED UP THE PATENT PROCESS

32 months.

That’s the average time taken to obtain a patent from a patent office. 

In this cut-throat world of business, that’s a lot of time. There are a number of factors that affect this time duration. From patentability searching to application drafting, filing, and so on, all of these take up time. The patent process can be an excruciating wait if getting your patent ready will mean immediate business results for you. 

Patent offices are looking over thousands of patent applications. Ensuring that each one of them meets all the formal requirements takes a lot of time.  There are certain fields where getting a patent in an accelerated manner becomes pivotal to protect their R&D efforts. 

A reason why patent applications are not quickly approved is because the examiners want to ensure that they get it right. Any lapse from their part can result in a lot of damages to the business that has filed the patent application. 

 

Why should you speed up the patent process?

When you speed up the patent process, it can immensely benefit your business. Here are some of them:

  • Competitive advantage: Having a patent issued in your name offers you a great amount of protection when compared with just saying that your patent is pending.
  • Licensing: It can be an additional revenue and a patent awarded to your name will give you immense leverage during discussions on royalty and licensing.
  • Enforcement: There is no way to enforce your patent rights against infringers unless you have the patent issued in your name.
  • Raising money: When you have a solid patent portfolio to show to your prospective investors, they will be able to trust in your business more. It will help with raising funds for your venture. 

 

Here are a few steps that you can take to speed up the patent process:

#1 Write a clear patent application:

The best way to reduce the chances of any delay in your patent approval process is to be excruciatingly thorough when you draft the application. Do remember that many applications are being handled apart from yours and you need to reduce as much friction as possible for them. 

Before you send the patent application, make sure that you do prior art search. The objective of prior art search is to ensure that your invention is new and non-obvious. By doing prior art search, you will be able to identify the closest prior arts, thus helping you define the scope of protection in your claims. It can even reduce your prosecution time as it will require lesser office actions and claim amendments.

When you write the patent application, describe the invention, how it works and what makes it a new invention and so on, in detail. If there is something that makes the invention unique, write about it in detail as well. It is important that you have a clear understanding of what makes your product ‘patent’ worthy. 

If you end up receiving a notice asking for more clarification, then ensure that you respond to them immediately without a delay. 

 

#2 Petition to Make Special:

It is possible to request that your application be given special privileges so that it can be expedited. You need to qualify to make your petition special. Here are the categories, the applicant should qualify for at least one of these:

Age: If any of the inventors is 65 or older, you can ask your attorney to get this petition filed.

Illness: If one of the inventor’s health is “such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course,” then you can request for the patent approval process to be expedited. 

Invention type: If you want to make the petition special regardless of the age or illness of the inventor, here is the criteria. The patent application that you file should be for an invention that does the following:

  1. Helps fight terrorism
  2. Increases the quality of the environment.
  3. Helps in the conservation of energy resources

 

#3 Be well prepared:

Once your patent application has been submitted, it may take years before you even get a sly nod from the patent office. You need to keep this in mind when you are about to file the patent application so that you have a strategy in mind to tackle any unforeseen delay. Make sure you are aware of all the examples, technical terms, and how you intend to negotiate your rights with the patent office. 

There are six months for you to respond to the patent office before you are supposed to start paying fees. Have your team ready to respond to the questions as soon as there is one. Every single day’s delay will also rack up your fees. It is a lose-lose situation if you are not well prepared. 

 

#4 Communicate with the patent officer:

When it comes to patent applications, it makes sense to communicate directly with the patent officer. Instead of sending emails back and forth, a face-to-face conversation will clear up things faster than you could imagine. Or even a video call would suffice. Instant communications will also help you avoid any misunderstandings. 

Even your examiner wants to get done with your patent application because it is his/her job. It is in the interests of both the parties to pick up the phone and have a conversation. When you talk to the patent examiner, hear their side to understand their view of the invention. More often than not, patents are technical, but the examiners need not necessarily be able to understand some of it. Having a one-to-one conversation can help clear the issues that they are facing and it will be easy for you to explain the invention without any jargon. 

 

#5 Original claims should be reasonable and few:

When you file broad patent claims, it is good for your business, but patent examiners prefer if you have claims that are narrow. There are high chances that a broad patent claim will cover more than what was invented, and that is a turn off for patent examiners. Keep in mind that you should make your invention sound novel and the non-obvious features of your technology should be clearly spelt out. This will help immensely with the fast tracking of your application. 

There are time constraints under which patent examiners work since there are a lot of patents that they need to pore through. When your claims are narrow, they are more likely to be cleared by the patent office. 

Here’s a tip- File narrow claims first so that you can cover the core elements. It will help in getting the patent fast tracked. After this, you can file for continuations so that you can cover every future application of your technology. 

 

#6 Use special programs to fast-track your application:

There are other ways to speed up patent prosecution as well:

  1. Prioritised Patent Examination Program
  2. Patent Prosecution Highway (PPH)

The Prioritised Patent Examination Program gives a utility or a plant patent application priority which allows a final deposition within twelve months. It offers special status and has fewer requirements, and it also doesn’t ask for a pre-examination search. 

PPH fast tracks the examination of the patent applications in participating countries with claims that have already been allowed by a foreign patent office in a corresponding patent application. When you receive the final ruling from the first patent office where you have filed your patent application, you can ask for a fast-track examination of your claims in the corresponding patent application pending in the other office. 

 

#7 Hire an IP firm: 

More often than not, it is best to get the help of experts instead of trying to do it yourself. Get the much-desired clarity by talking to an experienced Intellectual Property firm who will be able to evaluate your unique predicament and you offer the right solution. There is no one-size-fits-all solution when it comes to speeding up the patent process which makes it difficult for those who are not privy to the workings of patent offices to do the right thing by themselves. 

 

Conclusion:

You have to remember that the patent office and examiners are there to help you. If you follow the seven strategies that we have listed above, you will be able to speed up your patent application. Filing a patent application and getting it approved in a time that you want requires a lot of things to fall in place. Concentrate on things that are in your control and do it in the right way. 

ResearchWire is a leading intellectual property consulting company that takes care of all of its client’s IP needs. Our IP experts have immense domain and industry experience, that’s how we have been able to add value to each of our clients. If you are looking to speed up your patent process, we will be more than happy to help you with it and guide you in the right direction. Get in Touch

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