Invalidity search is a comprehensive and thorough search of prior art to draw out “one critical” reference that might invalidate an existing patent.
# BASIC OBJECTIVE – FIND PRIOR-ART THAT INVALIDATES A GRANTED PATENT
The basic purpose of conducting invalidity searches is to find a prior-art that predates the effective priority date of the target patent and thereby invalidate it. For that, invalidity searches do a critical patentability assessment of “target patent” on grounds of novelty, non-obviousness or combination of both.
Invalidity search is commissioned when enforceability of a patent has to be confirmed or some specific requirement has to be met, such as:
• In times when contemplating assertion, licensing, buying or selling of a patent;
• Patent infringement threat is anticipated;
• Litigation has to be initiated; or
• A petition for review of a patent has to be filed in the concerned patent office
# NO RESTRICTION ON TYPE/LANGUAGE/COUNTRY OF PRIOR ART
As such there are no restrictions and documents published anywhere in the world and in any language are relevant. Generally differentiating between Novelty Destroying and Non-Obviousness Destroying Prior Art is difficult. However, following analogy should help.
#Simple Analogy to Understand That How A Patent Can Be Invalidated Using Concepts of “Novelty” & “Non-Obviousness” or “Both”
In most cases, it is relatively easy to invalidate a patent using a prior art on novelty grounds. Contrastingly, on obviousness requirement, it is a little difficult because it requires combining elements of prior art in such a way that it becomes apparent to someone skilled in the art.
To understand this, let’s assume “the patent in question” claims use of X i.e. a small molecule (a protease inhibitor) for treating cancer. Now for invalidating this patent, we need to find invalidating prior-art using following three strategies:
1. Novelty destroying prior-art
It could be a patent that claims exactly the same as “the patent in question”. It also claims use of X i.e. a small molecule (a protease inhibitor) for treating cancer. The only difference being that it was filed earlier than effective priority date of the target patent.
2. Non-obviousness destroying prior-art
A patent that claims use of protease inhibitor for treatment of cancer and a document that claims that X is a protease inhibitor can be combined together to invalidate the target patent.
3. Alternatively, a searcher may also look for patents that claim use of different molecules viz. Y, Z, A, B for treatment of cancer and use it in combination with those other prior-art documents that reveal that these molecules are protease inhibitors.
# ENGAGE SKILLED PROFESSIONALS
It is invariably recommended that invalidity searches are conducted by skilled professional prior-art researchers who:
– Have the desired domain knowledge to minutely understand the technical aspects of the patented invention.
– Are apt in using patent search tools and databases and using combinations of both simple & complex search strategies to find prior art references in multiple languages and in multiple jurisdictions.
# No Search is 100%
No search can guarantee that a magic reference that can be used to invalidate a patent will always be found. However, searches done by professionals ensure that closest results are returned helping you make informed decisions.
# INVALIDITY SEARCH HAS MANY NAMES – DON’T GET CONFUSED
An invalidity search is also variously known as-
– Patent Strength Assessment Search,
– Patent Nullity Search,
– A search that ensures no prior art for the patent in question exists and it is, thus enforceable, is referred to as “Validity Search”.
– A search that is aimed to gather evidence to oppose a patent application that is close to getting a grant or a granted patent is referred to as “Opposition Search”.
Validity and Opposition Searches essentially uses the same search process as invalidity searches but differs in terms of client’s requirement/perspective.