Invalidity search/ opposition search is a specialized search to assess the validity of claims of a granted/ enforced patent. This in general is undertaken during litigation when a party is accused of infringing a granted patent or in anticipation of any such patent lawsuit in future. Such procedure is also associated with strategically important scenarios, when corporates plan to oppose a competitor's granted patent. Recent changes after America Invents Act (AIA) allow following post-grant procedures: inter partes review (IPR), post-grant review (PGR), Ex Party reexamination. Below are the primary reasons for conducting Invalidity searches:
First step in conducting an Invalidation search is to establish a priority date of the claims in the patent that needs to be invalidated. As a general practice, filing date is used as the cut-off dates for identification of prior-art references that are published before this date. Technical expert prepares a strong understanding around the scope of the claims (ideally adopting broadest reasonable interpretation in conjunction with embodiments & specification) after reviewing both the patent specification and file wrapper. Both the documents that are disclosed in the patent as well as those cited or discussed during the prosecution are reviewed with focus on using any such reference primarily from obviousness/ lack of inventive step aspect. Various search strategies are aligned together to identify potentially relevant prior art documents (both Patent publications and Non-patent Literature) to build either the anticipation or obviousness argument.
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