Patent Invalidity Search
If a defendant is being sued for infringement, a defense strategy must be developed. This involves not just obtaining opinions of non-infringement but also, more importantly, determining whether any prior art exists that can render the claims of the asserted patent invalid. Citius Minds thus, specializes in comprehensive and focused Patent Invalidity Searches for its clients to help guide their decisions.
Such Searches Make Your Defense Stronger
A dedicated team of experienced experts performs a comprehensive prior art search to potentially invalidate the claims of an asserted patent. We specialize in seeking prior art from a diverse range of sources, which means nothing falls through the cracks.
Deliverables and Benefits
Our Patent Invalidity Search reports are tailored to be clear, concise, and actionable to help defend against each legal claim. Key elements include:
* Stated Prior Art Summaries: Thorough documentation in support of prior art patents and non-patent literature commensurate with the arguments made in the case.
* Claim Mapping Analysis: Model-based mapping between previous art disclosures and patent claims to derive invalidating evidence.
* Strategic Recommendation: Ideas to fortify invalidation arguments including holes and opportunities in the discovered prior artwork
Get a Free Quote
Our Approach
1.Full Scale Prior Art Search:
Locating relevant patent literature and non-patent literature (NPL) to dispute novelty and inventiveness of the claimed patent. To ensure that no relevant information is missed, we search all relevant databases, extending beyond sequence databases, but including:
* Keyword-based Searches: Trail broad searches on paid and free patent databases to get related documents.
* Classification-Based Searches: Searching Related Prior Art Using Relevant Patent Classifications.
* Assignee/Inventor-Based Searches: Studying the filing patterns of specific companies or people with respect to sequences.
* Citation-Based Searching: Finding more documents based on their citations
Utilizing our experience in a range of technical fields to help find the most relevant prior art.
2. Worldwide Presence with Specialization in Asian Languages:
* Search features providing Asian language capabilities allowing us to find the prior art from major jurisdictions including China, Japan, Korea, and India.
* Ability to tap into region-specific databases and resources for a comprehensive and reliable search.
3. Processing and Mapping of Claims at Scale:
* A claim element-by-claim element mapping process, wherein we delve into each of the claims in the asserted patent and map away with the identified prior art.
* The granularity of USPTO findings assists in developing refined invalidity positions which challenge the enforceability of the patent.
Why Choose Citius Minds?
* Multifaceted Experience: Our team brings complex technology and industry expertise.
* Databases Around the Globe: Familiar with world-wide resources, including specialized databases not necessarily in English.
* Proven Methodology: Well-founded search processes and attention to detail ensure that we deliver high-quality results that hold up to scrutiny.
Empowering Your Legal Defense
Defendants partnering with Citius Minds have a critical advantage in matters involving litigation. With our comprehensive Patent Invalidity Searches and a detailed claim mapping, we set the foundation to deliver an accurate and persuasive invalidation contentions, allowing our clients to effectively challenge the enforceability of the asserted patent.
Enhance your defense with Citius minds — your trusted Patent Invalidity Search and analysis partner.
Case Study
“We were about to lose the case. The judge had already given a decision in favor of the plaintiffs in pre-trial. I don’t know how they did it, but the references they found and mapped convinced the jury to rule in our favor. We won only because of the extremely efficient and technically skilled team of Citius Minds.”
Partner – Reputed Law Firm
Challenge:
A reputed law firm representing a multinational corporation was involved in a patent infringement lawsuit. The client desired to challenge the validity of the asserted patent. The asserted patent disclosed a method and apparatus for receiving signals which were transmitted in accordance with different transmission standards. The client wished to identify prior arts against the asserted independent claims of the patent, and it’s further asserted dependent claims. They had not been able to find any promising reference that could independently or in combination cover the novelty of the patent. Citius Minds was engaged to perform an analysis of the subject matter, identify prior arts suitable for challenging and proving the validity of the asserted patent.
Execution:
The team thoroughly investigated the disclosed technology and the file history of the subject patent to understand the technology and novel features of the invention. All the previously identified prior-arts and patent citations were thoroughly analyzed. A citation analysis of these references was performed to search in closely related prior-arts. A ‘Same-Page Document’ was shared with the client for sharing the team’s understanding of the invention with the client. This document included key features of the invention based on team’s understanding, several representative term-sets and important US, IPC, CPC classifications, which could potentially be used in conducting the search. Citius Minds used several paid and free databases to formulate various key strings using different term-sets and combinations to list the prior arts similar to subject patent. Further, several key strings were run on the identified major companies having patents in this technology area, including Qualcomm, Philips, Samsung, Motorola, Hitachi, and Harris Corporation. The final list consisted of more than 3000 unique patents, which were reviewed to shortlist the best available prior arts which disclosed all the key features of the patent in suit independently or in combination.
The shortlisted prior arts were also disclosing a similar receiver system which can receive signals transmitted from a different location in accordance with different transmission standards. One of the prior art identified by the team was disclosing a television receiver for receiving the television signals which were transmitted using different types of transmissions such as analog or digital, via cable, satellite, etc. which was the novelty of the asserted patent and also the missing piece of the client’s invalidity claim.
All the identified references were listed in a detailed report which also included ‘claim element-wise’ color coded mapping of the asserted claims with relevant description of the prior arts, all possible 103 combinations, explanation of grounds of obviousness, ratings of the mapped relevant text against each element and commentary of the references wherever required.
Impact:
The client was very happy to find a reference that disclosed the novelty of the asserted patent. The 103 combinations and grounds of obviousness listed in the report enabled the client to prove the asserted claims of subject patent, obvious and unpatentable. The color coded claim mapping with commentary and element wise rating made it very easy for the client’s attorney to understand the prior-arts comprehensively and leave the plaintiffs defenseless in the court. The client was able to win the case as the judge agreed that the patent was not novel and any person skilled in the art would have come up with such an invention, at the time, after reviewing the prior-art presented by us.
Want to share this with your friends or email it to someone who would want to read this?
For any queries, email us at [email protected]
FREQUENTLY ASKED QUESTIONS
1. What is a patent validity search?
A patent validity search is conducted to verify the enforceability and strength of an issued patent. This type of search examines prior art that was not found or considered during the patent’s prosecution to determine whether the patent can withstand legal challenges, such as in court or during licensing negotiations.
2. Why would I need a patent validity search?
A patent validity search is often requested in situations where a patent is being enforced, such as in litigation or licensing deals. It can help determine if the patent is strong enough to enforce or license and whether it is vulnerable to invalidation due to undiscovered prior art. It can also be a crucial tool for companies seeking to defend against infringement claims
3. How is a validity search different from an invalidity search?
While both searches examine prior art, a validity search is generally conducted by the patent owner or licensee to confirm the strength of their patent before enforcement or licensing. An invalidity search, on the other hand, is usually performed by an opposing party to find prior art that can weaken or invalidate the patent.
4. How long does a validity search take?
The timeline for a patent validity search typically ranges from 2 to 3 weeks, but it can be longer if the patent covers a highly complex technology or requires an in-depth analysis of prior art across multiple fields. The scope of the search can also affect the duration.
5. What sources are used for a patent validity search?
We use an array of sources including issued patents, patent applications, technical publications, industry standards, and non-patent literature (NPL) to ensure a comprehensive review. By accessing a wide range of databases, we ensure that no relevant prior art is overlooked.
6. When is the best time to conduct a patent validity search?
A patent validity search should be conducted before enforcing a patent in litigation, during licensing negotiations, or when a company is preparing for potential litigation. It is also useful if a company suspects that a competitor is challenging their patent rights.
7. How much does a validity search cost?
The cost varies depending on the complexity of the patent and the amount of prior art that needs to be reviewed. At Citius Minds, we tailor our pricing to the needs of the client and the project, providing detailed quotes based on the scope of the search
8. What is the difference between a validity search and an infringement search?
A validity search assesses whether a patent is strong and enforceable, while an infringement search determines if a product or process violates the claims of an existing patent. Both are important in different contexts—validity for defending a patent and infringement for protecting against unauthorized use.
9. Can prior art found invalidate the entire patent?
Yes, prior art that discloses the same or similar elements claimed in the patent can invalidate some or all of the patent’s claims. If key claims are invalidated, the enforceability of the patent can be significantly weakened or nullified altogether.
10. Is a validity search limited to the same jurisdiction where the patent was granted?
No, a validity search can include global prior art, even from jurisdictions where the patent is not registered. Prior art from anywhere in the world can impact the validity of a patent, even if the patent was granted in a specific country.