Why should I carry out an Invalidity Search?
During the defence stage, there are three main factors to consider:
- Can I attack an obstructive patent that is preventing my freedom to operate?
- Can I attack a third-party patent that I am being accused of infringing?
- How strong is my own patent against an attack on its validity?
An invalidity search (opposition or patent busting search), aims to identify patent and non-patent literature that could be used to formulate an attack on a patent. To do this, the results generated will fall under two categories, based on their priority and publication dates.
The first category of results encompasses all prior art (patent and non-patent) published in the public domain before the filing date (or the priority date if it is entitled to it) of the patent in suit. A well-structured invalidity search will uncover documents that were not cited by the examiner at the time of patent office examination, that could be used to show a lack of novelty of the claims or may be used in combination to generate an attack on the inventive step of the invention.
The second category of results would include patents found relating to novelty destroying art that fall into the “equivalent patent” category, i.e. equivalent patents on territory with earlier filing/priority but published later than filing/priority of the patent in suit. This art is also known as Section 2(3) art (UK Patents Act), Article 54(3) of the EPO Patents Act and likewise for other patent jurisdictions.
Similarly, a Patent Strength Analysis search can be used to compile an assessment of the vulnerability of a patent against an attack from a third party who may supply evidence against its validity. This is an important tool when looking to purchase or licence a third-party patent, or whether you are looking to increase the saleability and value of your own patent. A Patent Strength Analysis search will use the same search parameters and methodology as an Invalidity search.
It is important to use the correct invalidity or patent strength analysis search when looking to attack or test the strength of a patent over using a patentability search, as a well-structured invalidity search will consider the citations identified by the examiner at the time of examination to explore different avenues of searching that the examiner may not have investigated. The scale of these types of searches also goes way beyond the scale of a patentability search. The reason for this is that the losses from a failed patent application are dwarfed by the losses of failing to break a patent or giving misleading information on the strength of a patent.