Be it a company facing patent infringement suit or a business exploring licensing opportunity, the importance of invalidity searches in such scenarios is well known in the intellectual property (IP) sector. One may deploy the search process, for several other objectives, is further optimized with the discovery of killer prior art – a silver bullet to invalidate a patent instantly. This article discusses unique approaches and tailor-made methodologies used by businesses to perform invalidity searches effectively to discover killer prior arts.

Patent Invalidity Search – Importance, Types, and Various Search Scenarios

Patent invalidity search is a thorough process of conducting patent and non-patent literature (NPL) search to identify the most relevant prior art references. Essentially, there are two types of invalidity searches:

Utility Search

This type of search is for utility patents that protect the way of using an article or functioning. The protection offered by utility patent covers the creation of a new and modified product, process, or machine.

Design Search

This type of search includes design patents that particularly protect the aesthetics of an article or the way an article looks. A design patent gets approval when a product has a unique configuration, surface, and ornamentation.

Additionally, invalidation search serves various purposes depending on the requirement. A business may decide to seek invalidation search from a trusted strategic partner when:

• Sued for infringement of granted patent claim(s)
• While exploring licensing opportunities
• To evaluate strength and value of a patent portfolio to support merger and acquisition
• Keeping a check on patent validity for defensive purposes
• To ensure validity of patent claims for intellectual property filing and monetization
• During pre-grant or post-grant opposition

Also Read: Patent Invalidity Search : The last line of defense

Different Variants of Patent Invalidity Search

Unique variants for performing invalidation searches offer flexibility to businesses in terms of time, cost and jurisdiction coverage. It enables them to address various critical and non-critical situations. Selecting the right type of search variant for effective results can optimize the entire process. For instance, Sagacious IP offers separate utility and design search variants customized to suit specific objectives without compromising on the quality of results. Read further to know about these variants.

Design Patent Invalidity Search Variants

For design invalidity searches, one picks up a search variant on the time constraint, efforts involved, budget, and jurisdiction. Sagacious IP uses Locarno classes, keywords, and national classification for design patent invalidity searches to offer detailed reports to businesses. The various search variants available are:

• Quick Search: This design search covers only the US and Europe, essentially for search in single jurisdiction or country. It is runs on the English language.

• Adequate Search: This design search runs on the US, Europe and for international design registrations. This also uses the English language.

• Comprehensive Search: This is a more meticulous search that covers design registration in more than 25 countries in the English language.

• Global Search: This is the search with the widest ambit wherein the process is run in multiple countries as per the jurisdictions of interest

Utility Patent Invalidity Search Variants

Search Variant 1

This search variant, which requires less time and money, comes into use when we require quick results. It runs in single jurisdiction when 70-80% of innovations pertaining to specified technology are carried out in the identified single jurisdiction only. Furthermore, this search variant allows the clubbing of NPL search at nominal charges, and runs on the English language.

Search variant 1 majorly comes into use in non-critical cases without internal or third-party search. It’s also sought before seeking a license for a patent and for ensuring the validity of patent claim(s).

Search Variant 2

This search variant conducts adequate and detailed searching which requires sufficient time. Designed for companies with a low to medium budget, this patent search covers major jurisdictions around the globe, i.e., the US, Europe, Germany, France, UK, China, Japan and Korea, where considerable patent filing is occurring.

This variant comes into use when a firm needs to evaluate the strength and value of a patent portfolio; to validate claim(s) during IP filing and monetization, and where no third-party search has been performed earlier.

Search Variant 3

This variant can be deployed when a comprehensive and substantive examination of targeted patents is required with adequate turn-around time. Search variant 3 is applicable in more than 100 countries, using three languages – English, German and French (customizable). This variant comes in handy when there is more probability of prior arts in European countries. Categorization of this process is by a thorough analysis of file wrapper, extraction of novel aspects, insight for keywords and more.

This variant is for critical situations, wherein internal and third-party search has already been performed. It is also useful to evaluate the strength and value of a patent portfolio to support mergers and acquisitions, and during the pre-grant and post-grant opposition phase.

Search Variant 4 (Comprehensive Plus)

This search variant conducts comprehensive and detailed examination of targeted patents, which requires reasonable time investment. The special feature of this search is that it comprises of six languages to make keywords. The patent search takes place in native patent offices as well. Furthermore, there is a provision of supplementary search, which is free of cost.

This includes a thorough analysis of file wrapper, extraction of novel aspects, and generation of insight for keywords, classifications and key strings. This search is for highly critical cases, wherein a company is sued for infringement of granted patent claim(s). Similarly, it monitors the validity of a patent for defensive purposes, and during the pre-grant or post-grant opposition phase.

Knockout Variant (Worldwide)

This search variant isupports quick and narrow utility patent invalidity search in less turn-around time. It is suitable for companies that have a low to medium budget. This search variant covers more than 100 countries and also leaves space for the inclusion of NPL.

The worldwide variant recommendation is to ensure validity of the patent claim(s); while seeking license for a patent, and without performing internal or third-party search.

Silver Bullet and Silver Bullet+ Search Variant

This is a landmark search variant that comes into use when businesses need to explore deeper to invalidate claim(s). There is no limit to jurisdictions in this variant. Additionally, it includes non-patent database searching as well. Silver bullet variant, which allows you to find the most relevant prior art, comes into use for highly critical cases.

It is recommended when an internal or third-party search has already been performed or when a company is sued for infringing granted patent claim(s). This search is also applicable for the pre-grant or post-grant opposition phase.

While providing this service, Sagacious IP charges only a nominal or basic fee if it is unable to find a silver bullet or killer prior art. On the contrary, one must pay the total service fee if the company finds the most relevant prior art. Furthermore, there is also a provision for free-of-cost supplementary search.

While silver bullet search comprises of three languages (English, German and French), silver bullet plus search comprises of six languages (English, German, French, Chinese, Japanese, and Korean). The search focuses more on finding the results rather than on billable hours, allowing one to have flexible timelines.

NPL Search Variant

As not all examiners rely on non-patent literature during the prosecution process, the NPL search variant often plays a critical role in utility patent invalidation searches. These searches require several NPL databases such as Springer, Science Direct, and Lens.org.

Sagacious IP uses adequate billable hours to conduct these searches, along with in-house repositories comprising almost all domain names (>200 domains) of NPLs. This search variant allows businesses to get top assignees and competitors working in the targeted domain. Lastly, it captures NPLs quickly and comprehensively by covering e-commerce websites, social media, technical manuals and more.

Native Search Language Variant

This variant allows invalidity searches and analysis in native languages by corresponding experts and native speakers. These experts perform the search by using English, Japanese, Chinese and Korean term sets. It also allows businesses to analyse various patent and non-patent documents in these native languages. The search uses several official and non-official databases such as Global Wipscorp, Naver, and J-Stage.

Three Phases of Invalidity Search

Conclusion

Using the above-mentioned search variants, as per the objective of patent invalidity search, can help companies to optimize their entire search process. Furthermore, it enables organizations to derive most effective results in terms of relevant prior arts. Each variant fulfills specific requirements of the firms according to their budget, time and goals.

Sagacious IP offers all patent invalidity search solutions mentioned above, allowing businesses to choose as per their requirements. Our committed patent practitioners provide companies with the most relevant and cost-effective patent invalidity search results. To watch a webinar on the subject, click here

-Rishabh Anurag (Engineering Searching) and the Editorial Team

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