It is possible for a patent to sound good on paper and still have significant problems when older technology is closely looked at. That's why an invalidity search might be worthwhile before a company commits a lot of resources to litigation, licensing or a new product strategy. The process focuses on more than just the obvious search results and yields earlier patents, publications, technical documents and other prior art that can impact the validity of certain patent claims.
This task can be particularly significant for U.S. companies if the patent is for technology that is already highly competitive. It can be challenging to understand what was known prior to a given filing or priority date if the details of previous patents have been filed for several years.
The strongest clue may not use the same language
The process of patent searching usually begins with keywords. It makes sense, but patent language isn't always predictable. It is possible to use terms that are different from an older publication in a description of a technical feature by an inventor.
An effective search approach considers the technology in a number of ways. Claim language, technical concepts, classes, citations, inventors, assignees and related patent families can be studied. This wider search can find documents a narrow keyword search might miss.
Typically, an invalidity search is directed at locating prior art which would invalidate one or more patent claims. The purpose of the task is not merely to gather a lot of documents in one place. Relevance, timing, technical disclosure and claim limitations are all important.
Prior art has to match the legal question
Finding an old patent doesn't automatically make a newer patent invalid. The timing and the content matter are all-important.
It is necessary for researchers to determine if a reference existed at the appropriate time and if it contains features that would meet the requirements of the claim. Different kinds of prior art and different standards may apply depending upon the different types of legal issues.
A date can change the value of a reference
An example of one of these errors is considering the date of publishing as an afterthought. There can be documents that are technically quite relevant but are too late to address the specific prior art question under investigation.
This can become more difficult with patent family records. There can be multiple jurisdictions where applications are filed, and applications can be filed at varying dates with various priority claims. In a US patent case, having the right perspective on the timeline can be as critical as having the right perspective on the technology.
This is why an expert researcher wouldn't just stop at a document that looks promising. They will follow through the relevant family and discuss the underlying disclosure.
Looking beyond patents can uncover useful evidence
While patent databases are key to this research, they're not the only ones to be considered. Scientific papers, conference materials, product documentation, technical manuals, standards, websites, dissertations, or other publicly available materials are all examples of resources that researchers may study, depending on the technology.
When technical development outpaces the publication of patents, this can be helpful in certain industries. Information that may not be in a patent record may be included in a research paper or presentation.
The other way round is also possible. Details of technical disclosure that do not exist in an academic publication can be disclosed in a patent. If you want to search with thought, then you think about both sides; you don't presume that one database has all the facts.
Claim charts turn research into something usable
After a list of potential references (if they exist) has been made, the next task is to interpret them. A claim chart is a tool that can guide the researchers to compare claim limitations to the disclosures of prior art.
This step sometimes reveals a problem that might not be visible in a broad search summary. The first impression of a reference may seem extremely relevant, but it might leave out one important thing. That missing feature may be found in another document in a different technical context.
The distinction matters. The validity of a patent is not based just on the overall similarity of two inventions.
If a company is engaged by patent counsel, a well-organized research record can also facilitate later communications. It provides attorneys and technical experts with a better foundation for more focused legal investigation.
The overlooked advantage is knowing what not to use
One rare and helpful technique is to note accepted references, as well as rejected ones. Having a record of what documents have been excluded will help avoid re-examination of the same poor documents later.
It can also show weaknesses in the search strategy. If many dozen references are rejected for the same reason, the researchers might need to narrow their search to a specific claim limitation, technical field or date range.
This kind of disciplined approach can help Citius Minds in the broader patent research space to make sense of the vast amounts of technical data and develop more IP intelligence.
Better decisions start before the dispute
An invalidity search can be helpful far before a patent lawsuit goes to court. This research can be utilized in license negotiations, product portfolio analysis, competitive analysis, acquisition due diligence or any other situation where substantial investment is to be made in a product.
Not all the most useful results are destroying documents. Occasionally, the search will reveal that a specific claim is stronger than anticipated, and another claim deserves more investigation.
All that information can still influence business decisions. Patent research is most effective if technical aspects, publication dates, claim language and legal goals are taken into account. A structured patent search can help clear up those pieces and enable a decision maker to gain insight into the nature and location of real patent issues and the need for further expert review.
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