Optimizing Patent Invalidation Searches with Best Practices

Understanding and implementing the best practices in a patent invalidation search can significantly enhance the efficiency and effectiveness of gathering prior-art to challenge the validity of granted patent claims. This article outlines several methodologies and strategies to effectively invalidate a patent, ensuring that no potential prior-art goes overlooked.

Approaches to Identify the Right Prior-Art

Knowledge of multiple approaches and an understanding of how to combine them is crucial when conducting a patent invalidation search. Here are the key strategies that can be employed to identify the right prior-art and challenge the validity of a granted patent.

1. Problem Need Solution Approach

Begin with a basic search using different databases to gather key terms and synonyms. Understand the technology disclosed in various patent specifications. This helps in laying out an existing body of prior-art. Next, extend the search by identifying the disadvantages or problems faced by the conventional techniques and understanding the proposed solution. This approach helps in pinpointing the key elements that can be challenged in the patent.

2. Classification Search Using IPC, CPC, USC, F-Terms

Patent documents are classified into major groups based on technology by respective patent offices. Utilize keywords from the target patent and search against classification codes in authorized databases like WIPO, USPTO, JPO, etc. Perform a search confined to specific classification codes to uncover prior-art references that fall under these codes. This method provides a structured way to identify relevant prior-art.

3. Narrow-to-Broad Strategy

Start with a narrow search focusing on the novelty of the target patent claim. Gradually broaden the search with key terms and proximities to retrieve prior-art that discloses the claimed concept in a single reference. This dual strategy ensures both precision and a broader context, making it more likely to uncover relevant prior-art.

4. Utilizing Citations

Collect prior-art cited by the examiner in the prosecution history of the cited references, particularly for family patents that have been challenged or abandoned. Analyze the prosecution history to identify potential references that can invalidate the target patent claims. Extend the citation search to check both backward and forward citations. This approach may reveal additional relevant prior-art that was not initially considered.

5. Leveraging Hidden Keywords

Some leading technology companies may use hidden keywords in their patent applications to avoid immediate detection by competitors. For instance, 'solar cells' could be indirectly disclosed as 'solar/sun energy harvesting devices.' Perform a search on these hidden keywords to uncover potential references. This technique ensures that even unconventional or obfuscated terms are included in the search.

6. Conducting Similar Patents Search

Perform a similar patent search for any identified potential references and analyze them meticulously. Eliminate references cited by the examiner during the initial search. This process may reveal additional classifications and key terms that were missed initially. Use these insights to refine your search strategies.

7. Targeting Assignees, Inventors, and Market Players

Search based on the assignee or inventor of the target patent. Further, extend the search to identify potential market players active around the filing date. Perform an assignee search and a non-patent literature search to identify videos, press releases, product manuals, etc., related to these market players. This broadens the scope of the search beyond patent literature.

8. Out-of-Box Thinking

Create search strategies that include terms beyond those explicitly claimed in the patent, particularly from the technical description part. For example, if a patent claims a method of switching applications between two smart devices, the establishment of an ad hoc connection between the devices may not be explicitly claimed. A search combining 'ad hoc' proximity to 'data swapping between devices' can uncover relevant prior-art that challenges the patent's validity.

9. Utilizing Multiple Databases

Not all databases are programmed identically, so using a variety of databases, both paid and open access, is a more comprehensive approach. AI-based databases may retrieve results based on semantic or classification-based programming, whereas non-AI databases might use different criteria. Employing multiple databases significantly enhances the chances of uncovering relevant prior-art.

10. Inclusion of Non-Patent Literature

Search for any published information before the priority date of the target patent. This can include research journals, videos, publications in learned societies, product handbooks, marketing advertisements, e-commerce sales, etc. This ensures that no relevant non-patent literature is overlooked.

11. Hybrid Approach

Combine different approaches to make an invalidation search more effective. The outcome of one approach can improve others to facilitate better search results. Examples include classification-keyterms-assignee, citations-keyterms-assignee, and classifications-citations. Hybrid approaches are particularly powerful when used in conjunction with each other.

12. Analyzing Litigation Details

Review any litigations involving the applicants/assignees of the identified potential patents. Analyze the plaintiff details to identify any patents or non-patent literature (NPL) owned by the plaintiff that can invalidate the target patent's claims. This approach can provide additional insights into the patent's potential vulnerabilities.

Conclusion and Call to Action

There is no single approach that can be considered vital for a patent invalidation search. Diligence and a belief that a potentially overlooked patent might exist can lead to more comprehensive searches. At LogicApt, we are committed to helping you with best practices to meet your requirements. Let us assist you in conducting a thorough and effective patent invalidation search.

Happy Reading!