The process of obtaining the grant of a patent begins with drafting of the patent specification and filing in appropriate branch of patent office. After filing, application is published and take up for examination. Examiner performs a patent search or prior art search to assess novelty of the invention before granting a patent. Once examination has taken place and the applicant has replied to all objections raised by the examiner, patent is granted. Even though patent is granted by the patent office, there may be some additional grounds based on which it may be possible to invalidate a patent. In India, if the patent has to be invalidated, it can be done at 3 levels, i.e., pre-grant opposition (before a patent is granted), post-grant opposition (within 12 months from the date of grant) or revocation (after 12 months’ time has expired from the date of the grant).
When in invalidation or validation search done?
Though the steps to perform validation or Invalidation search are same, purpose and outcome may be different. Invalidation search is performed to identify the grounds on the basis of which a patent can be opposed or revoked whereas validation search is primarily performed to find out how strong the patent is compared to prior art and how strong is it to sustain a litigation. In simple words, we can say that when a search is conducted to validate the claims of a given patent, it is called Patent Validity search and when it is used to invalidate the claims of a given patent then it is called Patent Invalidity Search. Other that prior art in the form of patents, this search also includes the non-patent literature.
Some of the scenarios where invalidation or validation search is performed are:
- In case of patent infringement, when defendant wants to oppose or revoke a patent, he performs invalidation search to identify statutory grounds on the basis of which patent can be invalidated. Therefore, invalidation report’s finding form part of opposition or revocation petition and helps the defendant to gauge the substance of patent infringement.
- In case of Technology Transfer process or at the time of valuating a patent, the patent to be licensed, often needs to be validated to find how strong the patent is. Here, the invention claimed in the patent specification is usually analysed in comparison with the prior art to understand how strong the patent is and this may be a great impact over the royalty fixed between the parties to license the patent.
- Sometimes the companies launch their products in the market without performing infringement analysis or FTO (Freedom to operate) search or don’t have knowledge about existing patents which they might be infringing. After they get to know about some existing patents that they might be infringing, it may be too late for them to stop manufacturing the product. In this situation, if there is no other option left and they are willing to take some risk, they usually get invalidation search done to understand the kind of risk they are taking by using third party’s patent (s).
The statutory grounds to invalidate a patent will differ according to the national patent laws of different countries. However, most national laws recognize grounds such as novelty, inventiveness of the invention as grounds to oppose a patent application or a patent. Therefore, an exhaustive prior art search will be directed at each of these separate sources of prior art to identify the prior publication to invalidate the patent.
Steps to perform an invalidation search
The broad steps to perform invalidation search are as below:
- Check legal status of the patent and the country wherein it is granted.
- Perform a global prior art search, restricted by priority date of the patent to be invalidated. Prior art available, before data of priory of the patent to be invalidated shall be taken into consideration. While performing search, it is highly recommended to perform a search in research papers too.
- Shortlist the prior art based on the relevancy and identify statutory grounds which are to be used to invalidate a patent. In India, Section 25 (Opposition to the patent) and Section 64 (Revocation of patents) of the Indian Patents Act 1970 shall be referred.
- Claims of all prior art and patent to be invalidated may be mapped to understand clearly the extent of overlap. It helps to understand novelty and inventiveness of the patent to be invalidated.
- Further, file wrapper history of the patent to be invalidated shall be checked thoroughly to find out if there is any official requirement which the patent holder has skipped. And this may be a useful piece of information to be added in the report.
- Finally, all findings shall be compiled to an Invalidation Report.
We at Origiin have expert team to perform Invalidation/Validation search for Patents. Our deliverables include:
- Invalidation report
- Claim mapping
- All prior arts in PDF format
Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)
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