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Invalidity Search

What is an Invalidity Search?

An invalidity search is performed when a person wants to either check the validity of their patent’s claims or those of a competitor’s. The aim of the search is to uncover, via both patent and non-patent literature, whether any claims are present that could affect the intellectual property (IP) in question. Depending on the approach taken, an invalidity search will either validate the individual’s patent claims or invalidate a competitor’s patent claims.

This search is typically performed at one of two points in the patent process: either after the patent has been issued (to check whether the patent could possibly draw claims from others) or upon receipt of a patent infringement suit. The former has value because it acts as a pair of fresh eyes to check for any prior art the examiner might have overlooked upon issuing the patent; the latter has value because it’s the first line of defense if confronted with a patent infringement claim, as an invalidity search will quickly confirm or invalidate the claimant’s suit.

An individual can also perform an invalidity search to ascertain a patent’s strength against possible claims and can be done at any time during the patent application process, or even after issuance for something like considering possible licensing of the product or service.

Other Terms for Invalidity Search:

  • Opposition search
  • Patent invalidity search
  • Patent validity search
  • Validation search
  • Invalidation search
  • Prior art search

Why is an Invalidity Search Important?

An invalidity search is important because it checks the veracity of claims against a patent, either to confirm or dispute the claims. Since the patent application process is 18 months in duration, there isn’t always enough time in which to cover all the bases. Therefore, efficiency is prioritized in an effort to minimize the chances of making a mistake or hitting a dead end.

The most common reasons for performing an invalidity search include:

  • To check for a patent’s validity or invalidity
  • To identify possible claims before starting new enforcement
  • To confirm if the licensor has the claims to a patent in question

If it does arise that the claims are valid, then the first step in tackling the suit is to check for prior art; if prior art exists, that is sufficient evidence for dealing with the claim.

Since there are many patent issuing offices, there can be different rules or standards outlining the conditions for a patent infringement suit. Either validating your own patent or invalidating another’s claims can take different appearances based on the geographical location and the laws in that area.

There are related searches that share characteristics with an invalidity search but differ slightly based on the individual’s environment. For example, a freedom to operate (FTO) search is almost identical to an invalidity search, with the main difference being when it’s performed (an FTO search takes place before patent issuance, while an invalidity search is usually after issuance.) Another one is contrasting invalidity vs state of the art search. A state of the art search makes use of information in the public domain, is performed at the start of the innovation process, and encompasses a broad array of topics, while an invalidity search is narrowed down to only conditions that could support or invalidate claims.

All are important tools for innovators to use and complement each other to strengthen the process. Because patent invalidity is a highly technical area where the smallest details matter, an individual would be best served used specialized patent software to ensure no mistakes are overlooked.