Invalidity Search Can Reveal Hidden Risks Within Patent Claims Today

A patent may appear to be a strong patent on paper, but may have significant concerns when an investigation is conducted. Companies that are formulating products in the USA may find that an invalidity search will reveal other patent(s), publications, technical papers and/or prior art that might impact the validity of the patent. That insight can make all the difference long before it heads to court.

In many cases, patent owners, licensing representatives, investment groups and litigation experts require a greater understanding of patent risks. A careful search doesn't just gather documents. It assists in relating an old technical disclosure to the terms of a patent clause.

The Risk May Be Buried in the Details

Patent claims are seldom a straightforward description of the invention. They may have several technical aspects, restrictions, connections, and operational requirements. A prior document can be seemingly unrelated but important when the technical information is compared to the elements of each of the claims.

That's one of its drawbacks of using broad keyword searches. To perform good patent research, one must know about the technology and the language, as well as the filing history and how similar concepts are described in the various references. It is not unusual for a document that was created years prior to a patent application to use different language for technology that is essentially the same.

Another important consideration for U.S. companies is timing. The filing date, priority date, publication date and legal structure of the patent may play a critical role in determining patent rights. Researchers should be able to determine the sequence of possible relevant references, not just pick one interesting document and assume that it is the deciding factor.

More Than Finding an Older Patent

Typically, an invalidity search is conducted to find prior art that might prove to be an infringement of one or more claims of a patent. Patents, patent applications, non-patent literature, scientific publications, product documentation, conference presentations, technical manuals etc. may be part of the research.

The significance can be in the interpretation of those references. Assume that there is a patent claim for a device made up of multiple different components that are combined in a specific manner. An older reference might contain most of the elements, or it may not contain a feature that is found in another. This doesn't rule out the claim, of course. The legal analysis may rely on such factors as anticipation, obviousness, etc., claim interpretation, dates, and multiple fact relationship. Research should determine the evidence and should not be a substitute for a legal question.

Where Research Quality Makes a Difference

Search depth is important but search discipline is even more important. The process of a useful process generally starts with the patent itself. Independent and dependent claims, technical terms, cited references, classifications, inventors, assignees, related applications and relevant technology areas are considered.

Once you've found the right domain name, you can go several routes from there. Citation networks can identify older citations which are not obvious from a simple search of a database, and patent family analysis can identify related filings in other jurisdictions. Non-patent literature can be particularly useful in technology-heavy fields such as biotechnology, electronics, telecommunications, software, and medical devices.

In the larger field of intellectual property research, for instance, Citius Minds operates in the realm of technical knowledge, where a structured patent analysis may help to make better-informed choices. The question that is not useful is "How many references were found?". It is whether the research yields evidence upon which attorneys and business teams can assess.

A Small Detail Can Change the Search

A practical problem is the drift of the terms. A component might be described in one way in a document for an existing product, and in another way in an older patent. The act of searching only the wording in the newer patent may result in missing out on relevant prior art.

Researchers will want to consider synonyms, abbreviations, older terms, classification codes, inventor activity, citations, and technical relationships. Sometimes, even the change of naming conventions within a decade can produce significant differences in the fields.

One more aspect that is overlooked is the documentation quality. The more items on the list, the less of a good research deliverable it may be. When writing a bibliography, decision makers typically require the following information: bibliographic details, relevant sections, dates, claim mapping, and an explanation of the reason why a given source should be attended.

Turning Findings Into a Better IP Decision

An invalidity search can impact on a number of business decisions. The findings can be used by the patent owner to re-evaluate litigation risk or to discuss licensing with the potential licensee. A company may have a clearer idea of what challenges it will face when considering a competitor's patent. Counsel may also utilize the research to further investigate and analyze the specific references that are most significant.

That practical benefit can go beyond litigation for US businesses. Patent research can be used to aid in due diligence for an acquisition or technology licensing transaction, freedom to operate planning and investment decisions. The sooner meaningful risks are identified, the more options are available to a business to respond to them.

However, search results must be viewed as a research finding and not as a replacement for legal advice. Patent validity questions are subjective and final legal determinations should be made by qualified patent counsel.

High-quality research reduces decision makers' blind spots. It won't guarantee that all risks will go away. Rather, it gives teams a more advantageous insight into the technical and documentary environment around a patent in an advantageous way, before the stakes get higher.

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