Patent attorneys perform patent invalidation analysis to find prior arts for challenging validity of granted patents. Generally, patent Invalidation is a kind of search performed to assess the validity of the granted patent. In use, a patent invalidation search is performed by the companies looking forward to sue for infringing a granted patents claims and a validation search is performed by companies or firms or entity or individual before suing an infringer to assess the patents validity. These searches have a similar process to be followed largely. However the terminology used may differ depending upon who is performing the search, infringer or the patent holder. Patent Invalidation searches are also used for analysing the strength of the patent and analysing the value of the patent portfolio during the mergers and acquisitions.
As per the process followed by experienced patent attorneys, the patent invalidation searches include two broad steps. The first step is when the patent claims are analyzed by studying all the relevant patent documents including the specifications mentioned in the application. Subsequently, the second step is when patent claims of the patent to be invalidated are mapped upon the relevant prior art search results. This means the patent attorney compares the relevant search results with the claims of the patent to see if all the claims are actually present in the prior art literature or whether such prior art sources disclose the claims to be invalidated, and the publication date of relevant search results is before the date of filing of the patent to be invalidated. According to the Indian Patents Act, patent invalidation can be initiated by any “person interested” as defined in the Act.
Invalidation of Patent involves a critical understanding of the patent in question that needs to be invalidated. One also needs to have prior art information with reference to the concerned patent. Before taking any action the patent must be quickly overviewed and understood in terms of its prior art disclosure situation. Understanding the scope of the patent and the patent claims will help you give a clearer direction for the prior art search. Patent invalidation can be performed by following certain simple steps. They are as follows:
Reading more about the claims that are rejected by the patent examiner, the grounds for rejection and the recorded prior art in the prosecution history gives an insight into what could be used for invalidation of the patent. It is extremely important and necessary to find out the information that has been disclosed in the file wrapper so that it helps in better understanding of the patent and the grounds on which it could be invalidated. If there is a prior art related to the patent, this indicates that the patent is relatively weak and the chances of invalidation are high.
Finding the prior art has more role to play when it comes to invalidating the patent. If a patent has been registered as a family patent then it becomes easier for invalidation. It shows that there are patents that did not stand by the usage of time and thus got invalidated. If a member of the family patent, then it can be used as invalidating evidence against the current patent.
There are certain grounds that can be used to invalidate a patent. Usually these grounds are used for invalidation purposes by law and judicial experts. After these steps have been complied with, the patent can be invalidated on various grounds, including, the invention claims that the patent is not novel, the elements of the patent claim do not constitute an invention, wrongfully obtaining the patent rights by a person who is not entitled to obtain patent rights as defined in the patent laws, insufficient disclosure of the invention, that the patent claims are obvious to a person of ordinary skills in the art, the description written in the patent application does not fully describe the patent claims as required by the patent law, or a failure to disclose information related to foreign applications as required by the patent law.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements. Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
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