Invalidity search or validity search is a prior art search conducted after the grant of the patent. The sole purpose of the invalidity search is to validate an enforceability of the granted patent’s claims. Invalidation searches provides prior arts that challenge the validity of the granted patent, where such prior arts were not cited by the examiner at the time of patent prosecution.
Invalidity searches are performed by applicants of the granted patent as well as by third party. Applicants usually perform patent validity search to reaffirm their validity and get protection from future litigations. However, a third party performs the search to invalidate the granted patent in order to refrain itself from patent litigation.An important accept to be considered while performing the invalidity search or the validity search is that the search should be restricted to patents or non-patent literature which existed in the public domain before the earliest priority date of the granted patent.
An example of the invalidity search or the validity search performed by us is as follows
We had to invalidate a patent related to “a system to trigger remote content by a server using URL mapping”.c
The patent had been a part of litigation before. In all such cases, the other party ended up settling the case. So, we had a feeling that this isn’t going to be an easy task. Hence, we stretched our limits to find a solution for the client, At any cost!
Prior art search was not like any other patent invalidity search where one can directly jump searching a patent after understanding it. It required a planning and then an execution. So, we came up with a plan where our execution point was to gather all the information of the patent.We started studying the prosecution history of the patent in question and identified already cited prior arts by the examiner.The analysis of the prosecution history revealed that the examiner had found the invention to be patentable and no objections were raised.
Hence, to challenge the validity of the subject patent, we had to find a prior art that explicitly discloses the claimed features.We targeted our search at the strong point of the patent. After a lot of dedicated efforts and manual analysis of 1500s of patents, we found one patent describing the inventive concepts with respect to the above definition of ‘URL mapping’.
We had a strong result for our client.
In every project, our thought process remains to solve the problem of the client. If there exists an exact prior art, we find it, no matter what. But if it does not exist, we still find the next best thing that could help our client.