Patent Opposition Search

"Helping in Challenging and Invalidating Competitor Patents"

"An Invalidity Search, also known as a Patent Invalidity or Opposition Search, is undertaken to uncover relevant patent and non-patent prior art. This prior art can be used, either individually (to contest the novelty) or in combination (to contest the inventive step), with the aim of challenging and potentially invalidating the claims of a competitor’s patent during patent litigation.

This search is among the most thorough and critical analyses conducted by patent professionals. Recent analyses suggest that up to half of all patents could be subject to validity challenges. In contrast, a Patent Validity Search is performed to confirm the robustness and enforceability of a patent's claims, supporting its legal defensibility.

Benefits of a Diligent Invalidity Search:

1.  It plays a crucial role in invalidating the claims of a patent in legal disputes, potentially shifting the outcome of patent infringement litigation.

2.  It enables the challenging of a competitor’s patent that may obstruct the utilization and commercialization of a technology, thereby clearing the path for innovation and market entry.

3.  It facilitates a strategic evaluation of a patent’s resilience, which is invaluable during negotiations over licenses and royalty payments. Discovery of prior art closely related to the patented technology can render the patent "weak," affecting its leverage in negotiations. Conversely, the absence of such prior art findings bolsters the patent's "strength," enhancing its value and defensive position.

Effectively, an Invalidity Search not only serves as a defensive tool against infringement claims but also as a strategic asset in navigating the complexities of patent rights and commercialization."

Key Considerations for Conducting a Patent Invalidity  Search

1. Claims Interpretation

The objective of an invalidity search is to uncover prior art that overlaps with the patent claims in question, challenging their novelty or inventive step. Prior to initiating the search, it is crucial to thoroughly review the patent's prosecution history to comprehend the rationale behind the patent office's allowance of the claims. Given that the claims have been previously examined and approved, a reasonably broad interpretation is essential to identify overlooked prior art. Attention should also be given to ancillary information and related technologies during the search process.

2. Determining the Search Cutoff Date

An invalidity search seeks prior art that predates the priority date of the challenged claims. Since a patent can claim multiple priority dates, precise identification of the relevant priority date for each challenged claim is paramount.

3. Utilization of Claim Charts

Similar to a Freedom to Operate (FTO) search, an invalidity search employs comparative reference charts, or claim charts, with color-coded texts to highlight the degree of overlap between the patent in question and the identified prior art.

4. Document Types for Consideration

The novelty of an invention can be impacted by prior claims, publications, or public use. Thus, the search should encompass patent literature, non-patent literature, and all other publicly accessible information to locate prior art for challenging the validity of the claims.

5. Comprehensive Search Strategies

In the context of patent litigation, where substantial financial interests are at stake, employing a diverse array of search methodologies is critical to uncover prior art that challenges the validity of the claims. These methodologies include:

• Concept searches

• Phrase and keyword searches

• Searches based on specific patent classification codes

• Combining keywords with patent classification codes

• Searches focused on key inventors and assignees

• Citation analyses

• Full-text searches

• Examination of non-patent literature

• Searches for documents in non-English languages, such as Chinese, Japanese, and Russian

• Specialized searches, as applicable, including chemical structure or design searches

6. Search Cutoff Date for Invalidity Searches

Invalidity searches focus on identifying disclosures made before the priority date of the claims being challenged.

7. Sources of Information

• Patent Publications

• Non-patent Literature: Journals, books, magazines, conference proceedings

• Additional public disclosures, including trade shows, newspapers, and academic theses, are rigorously analyzed to ensure a comprehensive invalidity search.