Patent Validity Search or Patent Invalidity Search

A Patent Validity Search or Patent Invalidity Search is an exhaustive Prior Art Search conducted after patent issuance.  The purpose of the search is either to validate the enforceability of a patent's claims or to invalidate one or more claims of a patent, respectively.  These two searches are identical except for the desired outcome (valid or invalid patent claims) of the search.

Conduct a Validity Prior Art Search before Asserting, Licensing, Buying, or Selling a Patent

A Patent Validity Search may be commissioned when a client is contemplating asserting, licensing, buying, or selling a patent and wants to confirm that the patent is enforceable.

Proof of Prior Art-Based Invalidity is the First Line of Defense

Proof of invalidity based on prior art is the first line of defense when confronted by patent infringement allegations.  Some of the largest law firms and corporations in the U.S. have commissioned PriorArtSearch.com to conduct a Patent Invalidity Search.  We help invalidate patents by uncovering prior art that other patent search firms cannot find.

With potential adverse judgments sometimes running into the hundreds of millions of dollars, it makes good business sense to have an experienced U.S. patent attorney conduct your prior art patent invalidity search.  Although we will start by using conventional patent prior art database search techniques, we will leave no stone unturned.  We help invalidate patents by uncovering prior art that other prior art search firms cannot find.

The Reasoning behind a Patent Validity or Invalidity Search

The Patent Office may have issued patent claims in error by overlooking the best prior art.  Patent examiners have limited time and resources to conduct their prior art searches.  By some accounts, the Patent Office only allocates on average about 12 hours per prosecution case for the Patent Examiner to conduct prior art searches.

One study (Janis, Patent Validity Litigation in the Courts, 2001) of Federal Circuit and District Court cases found that in 54% of the court decisions patent claims sustained a validity challenge.  Thus, 46% of the decisions found patent invalidity.  Although not all of these patents were found invalid based on prior art, an exhaustive patent invalidity search should be the first line of defense in fending off patent infringement allegations.

A client may use the results of a patent invalidity search to try to invalidate the patent either by litigation or by filing a Request for Reexamination at the U.S. Patent and Trademark Office.

The Extent of a Patent Invalidity Search

The patent invalidity search is generally wide-ranging and extensive because an entire patent infringement lawsuit may depend on it.  Moreover, newly developed documents and showings generally must be better than the prior art of record uncovered earlier by the Patent Examiner.  Thus, a patent invalidity search is an all-out attack on the patent.

The Grounds to Invalidate a Patent Based on Prior Art

The grounds to invalidate a patent differ according to the national patent laws of different countries.  However, most national laws recognize grounds such as publication of the invention prior to the priority date of the application for patent, sales of the invention, prior public knowledge, or prior public use.  An exhaustive prior art search will be directed at each of these separate sources of prior art.

Sources of Prior Art for a Patent Invalidity Search

The reservoir of prior art is vast.  The most common sources of prior art are patents, published patent applications, and non-patent literature, such as journals, books, academic work, product literature, and internet publications.  Prior art also includes physical embodiments of products and evidence of sale or public use.  Even a Donald Duck story can be used as prior art. 

Each of these sources of prior art requires a different search approach and are more or less applicable depending on the subject area of technology.

Patent collections are distinguished from other prior art information sources by their excellent organization and accessibility.  Patents are one of the most thoroughly indexed and documented forms of literature, allowing specific prior art search information to be retrieved and reviewed with considerable accuracy.  The patents issued or patent applications published by the USPTO, EPO, PCT, and JPO cover more than 90% of patents and applications filed worldwide.  Thus, a patent prior art search usually includes a search of patents emanating from these patent offices.

Since patent documents must describe inventions in sufficient detail that persons skilled in the art can reproduce them, (insufficient disclosure can result in the rejection of a patent application) these documents will contain detailed information you will not find in classic scientific publications.

Depending on your needs, we can conduct a non-patent literature (NPL) prior art search, although such searches can difficult to search and be expensive.  Academic papers are in the forefront of innovation but often tend to lack the type of technical detail that is required.  No single source comes close to covering all publications available.  The need to conduct NPL prior art searches depends on the targeted technology and type of search.

For example, in the mechanical and electrical hardware arts, patens tend to provide extensive coverage, whereas practitioners in the fields of computer science, medicine, and biotechnology tend to publish more frequently in journals.  For a typical patentability search, the search may skip non-patent literature, whereas for validity searches with a great deal of money at stake, the search should encompass all sources of prior art.

Our prior art search to establish validity or invalidity will cover both patent and non-patent literature for relevant art prior to the date of invention.  The reference date of these documents varies.  Under U.S. law, the reference date of a U.S. patent or published patent application is its earliest filing date in the U.S.  For other publications, the reference date is the publication date.

The Critical Date is the Date of Invention

The patent invalidity search attempts to locate prior art patents or nonpatent publications that predate a critical date that corresponds to the date of invention of the target patent.

In a first-to-invent country such as the U.S., when an inventor conceives an invention and diligently reduces it to practice, the date of invention will be the date of conception.  Thus, in a first-to-invent country where the inventor diligently reduced the invention to practice, the date of a reference must precede the date of conception in order to be prior art.

In a first-to-file country, the date of invention is the date the applicant files a patent application.  In such a country, the date of a reference need only precede the date the patent application was filed in order to be prior art.  Note that even in a first-to-file country the date of invention will be the patent application filing date if the inventor does not diligently reduce the invention to practice.

Using PriorArtSearch.com for Your Patent Invalidity Search

We do not stop at database searching when we take on an invalidity search.  Given the time and budget, our prior art search will dig up old product brochures or out-of-date products, locate peers of inventive entities, investigate trade show disclosures from a decade ago, or do whatever else it takes to invalidate a patent.  We have been conducting invalidity searches for 20 years and we will be relentless in striving to find the invalidating reference that you need.