Understanding Patent Validation/Invalidation Search

A key aspect for granting an application for a Patent involves a patent examiner conducting an extensive search to uncover the prior-art references. The identified prior-art references are examined against the claims to determine the patentability of the application i.e., whether the application should be granted or not on the grounds of Novelty, Non-Obviousness/Technical Efficacy and Industrial Applicability.

Typically, granting a patent application means, granting a set of claims made by the Patent application. In some instances, the examiner may overlook the relevant prior-art and grant the claims, which may lead to an unnecessary grant of claims for which the prior-art is known. Any relevant disclosure that is available in the public domain before the first filing date of Patent application i.e., the priority date of the granted claim(s) is considered as known prior-art.

Patent validation/Invalidation search is a typical type of patent search, which is conducted either to validate or invalidate a set of the claim(s) of a patent. The other purpose of this type of search is also to determine and estimate the strength of the claim(s) that are granted.

The output of this type of search is considered as one of the possible options to decide and analyze the merits of defending an infringement suit faced by a firm/individual. For example, consider a firm named ABC, Inc filed an infringement lawsuit against a firm named XYZ, Inc stating the facts that manufacturing process adapted by XYZ, Inc is infringing the claim(s) of a patent granted to ABC, Inc”.

As a prima facie XYZ, Inc may propose for an invalidation search and check if the claims are valid or if there is any publication before the priority date to invalidate the claims. Any relevant publication can be used to file a counterclaim by XYZ, Inc and invalidate the patent granted to ABC, Inc.

Patent validation/Invalidation search is also carried out during a potential Patent licensing or a deal involving buying a Patent. For example, XYZ, Inc is interested in obtaining a license for a patent granted to the firm ABC, Inc. Before obtaining the license, XYZ, Inc may propose for the patent validation/invalidation search to determine and estimate the strength of the claim(s) of a patent granted for ABC, Inc.

Depending upon the output of the search, and obviously, if the claims are still valid, XYZ, Inc plans accordingly to pay the royalty depending on the strength of the claim(s) and other terms and conditions agreed.

In view of the above-discussed points, analysis of patent claims is a key task while conducting a Validation/Invalidation search. During claim analysis, each claim element is compared with the closest prior-art publication and represented as a claim chart. A claim chart is prepared by a Patent expert with expertise in the subject matter by understanding and interpreting the context of claims with respect to the specification.

Key points to conduct Validation/Invalidation Search

1. Analysis of claims granted for the patent in question in the context of text and drawings of the specification.
2. Extensive analysis of file history related to the Patent to understand the grounds that lead to the grant of Patent.
3. Framing a comprehensive search strategy (including keywords, critical date restrictions, and classification codes) to uncover the prior-art.
4. A thorough review of prior-art publications to cross-check the patentability aspects (Novelty and Non-obviousness) of the Patent in question.

Sample manual claim chart:

Claim Elements	Relevant Prior Art 1	Relevant Prior Art 2
Subject Patent US7XX6X5	US6XX8XX	US20060XXXX
Priority Date: 16 Nov 2016	15-Mar-99	29-Dec-04
E1: A method for allowing XXX communications to reach at least one intended XXX comprising	Not disclosed	Not disclosed
E2: providing a mobile communications device XXXX connected to a communications network	IN DESCRIPTION: Col.7, lines 57-61. The wireless communication device may include any conventional analog or digital wireless telephone or cellular radiotelephone. A suitable wireless communication device communicates with a wireless communication network functionally connected to the landline network.	IN DESCRIPTION: Paragraph No: 0015. For illustration purposes only, the description below will focus on an embodiment of the RCS 100 as a cellular network. It will be appreciated by one of ordinary skill in the art that the embodiments of the invention are applicable to any radio communication system that is capable of relaying voice and/or data messages between the MCD and any other communication device.
E3: wherein the mobile communications device is XXXXX between XXX communications and XXX-XXX communications	IN DESCRIPTION: col.32, lines 3-10. FIGS. 17-18 illustrate a preferred embodiment of the invention. In start block 1700, the routine begins when the subscriber’s landline telephone service is interrupted. Step 1700 is followed by step 1702, in which the backup device 102 powers up a wireless communication device 206. A pre-assigned or preprogrammed virtual mobile identification number (MIN) identifies the wireless communication device 206 in a wireless network.	IN DESCRIPTION: Paragraph No: 0041. In yet another embodiment of the present invention, the processor 203 can be programmed to direct the wireless transceiver 202 to transmit messages at an amplified signal power to the RCS 100. This is especially useful in terrain where it is known that there is spotty or poor coverage between the MCD 106 and the RCS 100. In severe emergencies, the RCS 100 can similarly transmit messages to the MCD 106 at an amplified signal power.
E4: wherein when the XXX XXX device is in XXX mode	Not disclosed	Not disclosed

Prometheus patent Services deliver diligent patent Validation/Invalidation search reports. Our team of technical experts from different streams of engineering and life science has well-versed experience in conducting and generating comprehensive Validation/Invalidation search reports. Please inbox to naresh@prometheusip.com for any further information.

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